Art167eTPEPC1973

Métadonnées

• Nom affiché : Art167eTPEPC1973
• Numéro d'article : 167
• Dossier / langue : English
• Tag langue : #English
• PDF original : Articles/English/Articles 151-175/Article 167 (English version)/Art167eTPEPC1973.pdf

Comment:

The collection represents purely an internal research tool for the purpose of Directorate Patent Law of the European Patent Office. No guarantee can be given for its completeness or correctness. The documents produced before 1969 cannot be provided in English as this was not an official language in the period before that date. These documents therefore are provided in French and German.

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Art. 167 MPU

Vorbehalte

Entwurf, der dem nebenstehenden Dokument zugrunde liegt	Art. Nr. im Entwurf/ Dokument	Dokument, in dem der Art. behandelt wird	Fundstelle im Dokument
BR/48/70	188a	BR/49/70	Rdn. 99-101
VE 1971 (Ue)	159	BR/168/72	Rdn. 159-162
VE 1971 (Ue)	159	BR/169/72	Rdn. 161-163
BR/88/71	158	BR/125/71	Rdn. 83-85
BR/88/71	169	BR/125/71	Rdn. 144
BR/199/2	163	BR/218/72	Rdn. 13/14
BR/199/72	163	BR/219/72	Rdn. 54/55

Dokumente der MDK

E 1972	166	M/16	S. 142
"	166	M/18	S. 166
"	166	M/19	S. 176
"	166	M/22	S. 248
"	166	M/24	S. 302
"	166	M/29	S. 352
"	166	M/72/II	S. 1
"	166	M/77/II	S. 1
"	166	M/83/II	S. 1
"	166	M/93/II	S. 1
"	166	M/99/II	S. 1
"	166	M/102/II	S. 1
"	166	M/106/II	S. 1

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chemical, food and pharmaceutical products. He pointed out, however, that if its proposal were rejected, the Greek delegation would remain free to submit another proposal, narrower in scope and entailing deletion of use in relation to food and pharmaceutical products only.

The Greek proposal was rejected by 9 votes against, 8 in favour and I abstention. 65. The Greek delegation announced a new proposal along the lines mentioned by the Chairman, although it went further than suggested by some delegations, because it did not mention food and pharmaceutical products in the second half of the sentence. 66. The French delegation stated that it would have to reject this proposal because processes of manufacture of food and pharmaceutical products mus: at all events be protected. 67. At a subsequent meeting the Greek delegation submitted the following compromise proposal for the second half of paragraph 2 (a) of Article 167 (M/154 G): "...; this reservation shall not affect protection conferred by the patent in so far as it involves a process of manufacture or use of chemical products or a process of manufacture of pharmaceutical or food products." 68. This proposal was adopted by the Committee of the Whole, which instructed the General Drafting Committee to include it in the existing text of the Article.

Rule 28 (R/9) - Requirements of European patent applications relating to micro-organisms

69. The Committee of the Whole adopted the revised version of this Rule drawn up by the General Drafting Committee on the basis of the conclusions reached by Main Committe I.

Rule 50 (R/9) - Information about publication

70. The Committee of the Whole adopted the version of this Rule as submitted by the Drafting Committee, paragraph 2 of which was based on the proposal put forward by the Austrian delegation in Main Committee I (M/PR/I, point 2272).

Rule 65 (R/10 and M/151 R/16) - Rejection of the appeal as inadmissible

71. The Chairman of the General Drafting Committee stated that, further to a proposal by the Norwegian delegation that the procedure for remedying deficiencies in the case of appeals should be the same as that applicable in the case of opposition, Main Committee I had instructed the Drafting Committee to examine the possibility of more closely aligning Rules 65 and 56 (M/PR/I, point 2299). Bearing in mind the fact that in Article 108 Main Committee I had divided the time limit for appeal into the period within which notice of appeal must be filed (two months) and that within which a written statement setting out the grounds of appeal must be filed (four months) (M/PR/I, point 462), the General Drafting Committee proposed the following wording, which it did not however consider to be absolutely essential: "...rejected as inadmissible, unless each deficiency has been remedied before the relevant time limit laid down in Article 108 has expired." 72. The Norwegian delegation still found this solution somewhat harsh compared with the possibilities laid down in Rule 56. It suggested that a paragraph corresponding to paragraph 2 of Rule 56 be included in Rule 65. 73. The Austrian delegation shared this view. 74. The Netherlands delegation feared that because of the shorter time limits applicable to appeals, there would not be sufficient time for arrangements along the lines of the proposed paragraph 2. 75. The Norwegian delegation considered that even in the case of appeals there would be sufficient time for remedying those minor deficiencies with which paragraph 2 was concerned.

At a subsequent meeting the Committee of the Whole first of all approved the abovementioned proposal by the General Drafting Committee for supplementing paragraph 1 of Rule 65, subject to the proviso that this provision only related to deficiencies resulting from failure to comply with the requirements of Rule 64 (b). Notwithstanding the objections of the German delegation, which considered that there should be stricter rules for appeals proceedings, it also adopted a proposal which had been submitted in the meantime by the Norwegian delegation (M/155/G) for the inclusion of a new paragraph 2 corresponding to paragraph 2 of Rule 56.

Rule 84 (R/11) - Duration of time limits

76. The Committee of the Whole approved the deletion of paragraph 2 made by the General Drafting Committee on the basis of the conclusions of Main Committee I (M/PR/I, point 2394).

Rule 93 (R/11) - Parts of the file not for inspection

77. In accordance with the discussions in Main Committee I (M/PR/I, point 2409) the General Drafting Committee specifically provided in sub-paragraph (c) that the designation of the inventor should not be disclosed where he had renounced his title as inventor.

The Committee of the Whole adopted this solution.

Rule 99 (R/11) - Procedure for letters rogatory

78. Further to a proposal by the Italian delegation (M/PR/I, point 2427) referred to it by Main Committee I, the General Drafting Committee submitted an amended version of paragraph 4 of this Rule.

This version was adopted by the Committee of the Whole.

Rule 106 (R/11) - Amendment of the list of professional representatives during a transitional period

79. The Chairman of the General Drafting Committee referred to the lengthy discussions which had been held on this Rule in Main Committee I. Although, after clarifying the interpretation to be given to this Rule, Main Committee I had concluded that the text need not be amended (M/PR/I, point 2519), the Drafting Committee had decided to refer to "other" requirements in paragraph 1 (b) instead of "further" requirements, in order to make the interpretation agreed by Main Committee I quite clear. 80. The Chairman of the Committee of the Whole confirmed that the other requirements referred to in paragraph 1 (b) were requirements other than those mentioned in paragraph 1 (a). 81. The Committee of the Whole approved the amendment submitted by the General Drafting Committee.

C. Protocol on Recognition (M/146 R/12)

82. Further to a proposal made by the IAPIP delegation in Main Committee I and the Committee's decision in this

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Recognition, the Protocol on Privileges and Immunities, the Protocol on Centralisation and the Protocol on the Interpretation of Article 69 shall be integral parts of this Convention."

Article 167 (R/7 and M/149) - Reservations

46. Further to the General Drafting Committee's explanation of the drafting amendments it had made to clarify the scope of this Article, the Chairman of the Committee of the Whole pointed out that the Greek delegation had submitted a proposal in M/149 which would entail a resumption of discussions on the matter. If a matter which had already been discussed were to be re-examined, this would require a two-thirds majority in the Committee of the Whole. 47. The Greek delegation made the following points in support of its proposal: after the text had been clarified by the General Drafting Committee, the Greek delegation had realised that the words "or use" should be deleted in paragraph 2 (a), since it would have the greatest difficulty in accepting the exclusion of use from the reservations. It recognised the great efforts which had been made by the other delegations, and in particular the German delegation, to meet its requirements on this matter but hoped that it would meet with understanding in now asking that these efforts should not be abandoned when a generally acceptable solution was imminent. The reference to use had presumably been incorporated in the text of the Article at a comparatively late stage in the proceedings because right from the start it had been clear that there would be practical difficulties in distinguishing between protection of a product and its use.

(a) Resumption of discussions

48. The Chairman of the Committee of the Whole asked which delegations were in favour of resuming discussions on this point. 49. The Netherlands delegation was against doing so on the grounds that this question had already been fully discussed by Main Committee II and no new factors relevant to the examination of the problem were raised by the text as submitted by the General Drafting Committee. 50. The Chairman felt that the difficulty experienced by the Greek delegation in agreeing to Article 167 as it stood at present might be a new factor. 51. The French delegation shared the view of the Netherlands delegation that no new factors had arisen on this question but was not opposed to resuming discussions which might result in new points emerging. 52. The United Kingdom delegation feared that to re-open discussions without knowing the reasons which would warrant such a course might simply lead to a repetition of arguments which had already been put forward. It was therefore against resuming discussions on this point. 53. The German delegation was in favour of continuing discussions on this matter for the following reasons: Article 167 had been drawn up in order to enable certain States which had not yet reached a very high technological level of development in the field of patent law to sign, ratify and at a later date apply the Convention. These States were not in a position to include product protection in their laws. If Article 167 were so drafted as to make it impossible for these States to sign and implement the Convention, the Article would become completely pointless. Greece feared that including a reference to the use of chemical products would undermine the purpose of the reservation, because under the present text products themselves would not be protected, but their use would. This could in some cases mean that perhaps the only reasonable use of a product would be protected thereby rendering the reservation option irrelevant. Article 167 was of no importance for the technologically developed States but only for the small number of countries which would have difficulty in signing the Convention if it were not possible to make reservations in this respect. 54. The Austrian delegation agreed with the German view and was also in favour of resuming discussions. 55. The Committee of the Whole voted on the matter. Of the 17 votes cast 13 were in favour and 4 against, thereby giving the required 2 / 3 majority for resuming discussions.

(b) Decision on the proposal by the Greek delegation

56. At the beginning of the discussions the Greek delegation stressed that difficulties would undoubtedly arise in applying a clause distinguishing between protection of a product and protection of the use of a product. Greece would have great difficulty in signing the Convention if the ill-defined concept of use were included, with the ensuing risk that the distinction between product protection and protection of use would be impossible to apply in practice. This Article posed no difficulties for a large number of States and therefore the danger of Greece being unable to ratify the Convention should be avoided by taking a small step towards meeting the wishes of those States which needed to be able to make the reservations in question. 57. The Portuguese and Spanish delegations supported the Greek proposal. 58. The French delegation was firmly opposed to deleting the term "use" in relation to chemical products but could consider deleting it in relation to pharmaceutical or food products, which would by their very description contain an indication of their use, and there was therefore a certain identity between the product itself and its use. 59. The United Kingdom delegation expressed a similar view, but emphasised that there could be no abandonment of protection of the use of a chemical product. 60. The Swiss delegation supported the statements of the two preceding delegations and stated that the inclusion of the word "use" at the end of this paragraph really related to chemical products only. If there was agreement on this point the present text could remain unchanged. 61. The EIRMA delegation pointed out that what was involved here was not simply a minor detail and that exclusion of use in relation not only to food and pharmaceutical products but also to chemical products would be greatly to the detriment of European industry, since it could well prove impossible to protect an invention which was essentially based on a particular feature of a new product. 62. The CEIF delegation agreed with this statement. 63. The German delegation was well aware of the objections which had been raised against deleting the reference to use, but considered that the issue was not so much a provision that would be applied without further ado, but rather a reservation of which countries would not necessarily avail themselves to the full. The purpose of this clause was to leave some latitude to national legislation, so that countries such as Greece would be in a position to sign and ratify the Convention without immediately having to amend their national law in certain specific respects. Reservations would furthermore apply only for a limited period of time. For these reasons the German delegation supported the Greek proposal. 64. The Chairman of the Committee of the Whole called for a vote on the Greek proposal that the term "use" should be deleted in relation to all three categories of products, i. e.

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reservation period provided for in paragraph 3 applied to Contracting States individually.

Rule 8 - Patent classification

2001. The Chairman drew the Committee's attention to the proposed amendment submitted by the German delegation in M/47/I/II/III, point 21. 2002. The WIPO representative welcomed the proposed text. However, he pointed out that since the Strasbourg Agreement of 1971 was not yet in force, provision should be made for the international classification based on the European Convention of 1954 to apply in the meantime. 2003. The Council of Europe representative supported the WIPO representative's proposal. 2004. The Committee was in favour of the adoption of the proposed amendment and referred it to the Drafting Committee.

Rule 9 - Allocation of duties to the departments of the first instance

2005. The Chairman drew the Committee's attention to the proposed amendment from the German delegation in M/47/I/II/III, point 22, which would add the Legal Division to the departments mentioned in paragraph 2; he pointed out that this was a logical consequence of the amendment to Article 15. 2006. The Committee agreed to this proposal and referred it to the Drafting Committee. 2007. The Chairman noted that the Swiss delegation's proposal in M/54/I/II/III that the last sentence in Article 23 (25) be replaced by a new paragraph 5 in Rule 9 should be considered rejected on account of the Committee's decision to retain Article 23 (25) as it stood.

D. Draft Protocol on the Centralisation of the European Patent System and on its Introduction (Protocol on Centralisation)

2001. The Committee discussed the Draft Protocol on the Centralisation of the European Patent System and on its Introduction (M/5), together with the Declaration concerning Section VI of the Protocol and the Recommendation on Documentation for Patent Search (M/6).

Section I of the Protocol on Centralisation

3002. The Committee discussed Section I of the Protocol on Centralisation, on which the following proposals for amendments had been submitted: M/38 (by the Italian delegation) M/47 (by the German delegation), M/95/II (by the United Kingdom delegation) and M/97/II (by the Turkish delegation). The Committee agreed to discuss at its meeting on the same day the proposal by the Turkish delegation which had been circulated on 18 September. 3003. The French delegation stated its agreement in principle with the United Kingdom proposal in M/95/II, but pointed out that this proposal referred to denunciation of the Hague Agreement. Provision was made for denunciation both in the 1947 and 1961 Agreements, but the conditions governing it differed in that, whilst the 1961 Agreement provided for denunciation to take effect on 31 December of the second year following that in which it was notified, the 1947 Agreement provided for denunciation to take effect one year after notification had been received by a Contracting State. The French delegation therefore proposed a broader wording, namely "terminate the Hague Agreement". Denunciation was primarily intended to cover cases where one or more Contracting States intended to withdraw from an agreement. However, the Contracting States to the Hague Agreement were agreed that it should be terminated. The French delegation also pointed out that the expression used in the second sub-paragraph of the United Kingdom proposal "... the tasks at present incumbent upon the International Patent Institute..." should be clarified particularly as concerned the operative date. 3004. The Netherlands delegation considered that the United Kingdom proposal only involved drafting changes and could therefore support it unreservedly, just as it could support the additional amendments sought by the French delegation. It also proposed that after the date of conclusion of the Hague Agreement (1947) reference should be made to the revision of the Agreement in 1961. 3005. The Italian delegation supported the proposals by the United Kingdom, French and Netherlands delegations. 3006. The German delegation did not consider that the new version of Section I of the Protocol as proposed by the United Kingdom delegation involved any substantive changes. However, the date on which the agreement referred to in paragraph 1 was "implemented" would have to be clarified. The same wording had been used in paragraph 2 with respect to the renunciation of activities under the PCT. This expression was vague and the German delegation would therefore prefer reference to be made to the date of entry into force of the agreement. If this date were considered to be too early, the date stipulated in Article 161, paragraph 1, could be referred to. 3007. The Austrian delegation shared the misgivings of the delegation of the Federal Republic of Germany over the date of implementation of the agreement. It also wondered whether the sentence in the second sub-paragraph of paragraph 1: "After the implementation of the said agreement, the tasks at present incumbent upon the International Patent Institute, and in particular those contracted vis-a-vis the Member States of the International Patent Institute, shall be assumed by that Directorate-General" took into account the fact that the intention was that European search reports would be only gradually extended over the various areas of technology and that European searching would not immediately cover all areas. This would mean that on the basis of the present Agreement a commitment would continue to exist vis-a-vis the IIB Member States to carry out comprehensive searching activities, whilst the other Contracting States of the Convention would be subject to restrictions in this respect. This would lead to discrimination between the Contracting States of the Convention and there would also be the related question of costs which would have to be clarified. 3008. The United Kingdom delegation stated its agreement to the proposed amendments to its own proposal put forward by the French delegation. It was to be hoped that entry into force and implementation of the agreement would occur simultaneously. If this were not the case difficulties would arise from the 1947 Hague Agreement, particularly as regards Article 13. However, the United Kingdom delegation considered that this was purely a drafting matter which should be referred to the Drafting Committee. 3009. The French delegation pointed out that, instead of referring to an agreement between the IIB and the European Patent Organisation, reference should be made to a special

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allowed the possibility of grouping together, in one and the same patent application, claims concerning respectively a product and a process: in States making reservations, such a patent would be revoked, not only for the product but also for the process. The UNEPA proposal was aimed at avoiding such a situation, and the Netherlands delegation was surprised that anyone should object to it. 1147. The Spanish delegation, considering that only claims covered by the reservations could be revoked and not the whole patent, supported the UNEPA proposal. 1148. The delegation of the Chambers of Commerce and Industry raised a matter linked with the problem dealt with in the UNEPA proposal; the proposed amendment to paragraph (a) excluded the protection of processes from the reservations; however, the inventive value of a process generally lay in the end product. There was therefore the question of whether a court in a State making reservations might not decide to revoke claims relating to a chemical process on the grounds that the inventive step lay basically in the product and that the process as such did not have any particular inventive merit. It was necessary for this question to be settled in order to determine the full implications of extending reservations to chemicals. The Chairman stated that this point could not be cleared up until the wording had been finalised. 1149. The Greek delegation stated that it did not object to the basic principle of the UNEPA proposal; however, for the reasons already stated, this principle should not be embodied in the provisions on reservations: any problems in this area should clearly be dealt with by national law.

The Greek delegation considered that the phrasing of the original version of Article 166, particularly the words "as such" was adequate. In order to reach a compromise it would be possible to supplement or clarify the meaning of these words in a statement. 1150. The Yugoslav delegation considered that the essence of the problem was clear. It was satisfied with the UNEPA proposal and could therefore support it. 1151. The Chairman noted that the Committee was unanimously agreed on the principle under discussion and therefore proposed that the Drafting Committee be instructed to find an acceptable wording to be included either in the Article itself or in a statement of interpretation. 1152. The United Kingdom delegation, supported by the Netherlands delegation, wished the Committee to decide on the amended version of the German proposal, in order to establish the attitudes of the countries concerned by the reservations to the Article in its amended form. 1153. The Committee unanimously approved the amended proposal submitted by the Federal Republic of Germany.

IV. Examination of the results of the Drafting Committee

1154. The Greek delegation proposed that a drafting amendment be made to the French text: the Words "dans la mesure où" should be replaced by "dès lors que" and "indèpendamment de ..." by "sans tenir compte de leur procédé de fabrication" in order to align the text on the English version. The Chairman stated that this proposal would be forwarded to the General Drafting Committee and, at the suggestion of the United Kingdom delegation, he proposed that discussions should be based on the English texts of this Article. 1155. The CEIF delegation drew the Committee's attention to an omission in the present wording of the Article. Rule 30, sub-paragraph (a) stipulated that one and the same application could include in addition to an independent claim for a product, an independent claim for a process and an independent claim for a use of the product. This last possibility should therefore be referred to in Article 166 by adding the following "... irrespective of their process of manufacture or of their use". 1156. The Greek delegation felt that this point was more than a simple matter of drafting since the distinction referred to might not exist under national law. It therefore requested an opportunity to consider the inclusion of this concept properly before expressing its opinion. The Spanish delegation expressed a similar view. 1157. The Yugoslav delegation considered that the present text of paragraph 2 (a) was not in conflict with Rule 30. On the contrary there was a danger that inclusion of the provision of Rule 30, which was referred to in Article 166, might cause misunderstandings. The Committee's position was clear: reservations were to be confined to chemical, pharmaceutical or food products as such. In order to avoid any ambiguity it would therefore be simpler to delete the words "irrespective of their process of manufacture" from the present draft. 1158. The Swiss delegation explained that the Drafting Committee had made an involuntary omission and that Article 166 should mention all the possibilities offered by Rule 30, subparagraph (a). The attention of the General Drafting Committee should be drawn to this drafting omission. The Netherlands delegation expressed a similar view and stressed that there was no need to re-open discussions on this point. 1159. The United Kingdom delegation pointed out that the Committee had taken a clear decision on this question: only claims relating to a product could be covered by reservations and in all other cases Article 166 would not apply. For the sake of clarity it might well be preferable to add the words "or of their use" but it was highly unlikely that a State would refuse to grant protection for a means of using a product on the basis of paragraph 2 (a). In any event the point under discussion was strictly a drafting matter. The French delegation shared the opinion of the United Kingdom delegation. 1160. The German delegation considered that the present text was not incorrect but that the drafting should be improved. It also pointed out that the Committee's previous decision on this point was perfectly clear: an independent claim for a use of a chemical product could not be covered by reservations; unless the use was a pharmaceutical one and the claim therefore equalled a claim for a pharmaceutical product. 1161. The Netherlands delegation considered that it would be preferable for this problem to be referred to the General Drafting Committee which should at the same time be informed of the Committee's wishes as regards the substance of the matter, which were perfectly clear. The General Drafting Committee could then either supplement the text as proposed by the CEIF delegation, or delete the words "irrespective of their process of manufacture", or make a more fundamental re-draft of this Article.

The Greek delegation supported this point of view and wished the scope of the reservations to be strictly defined. 1162. The Chairman noted the consensus which had emerged in the Committee and stated that the Article would be forwarded to the General Drafting Committee which would quite simply be instructed that reservations should only relate to products as such. 1163. The EIRMA delegation suggested that paragraph 6 of the French version should begin with the words "Sans préjudice des dispositions" rather than "Réserve faite", in order to avoid any confusion. 1164. The German delegation considered that the German version should make it clearer that the extension of the

(ii) Extension of the period for reservations

1131. The United Kingdom delegation said that it would be unfortunate if a State having made the necessary efforts to adjust was faced with great difficulties after the ten year period. In such circumstances, it would be desirable for the Administrative Council to have the power to extend this period for a strictly limited time in the light of the situation: for this purpose two years and not five should be sufficient. Moreover, the United Kingdom delegation considered that the grounds on which such a decision could be based should also be specified: it was particularly important that the country making the request should prove that it had undertaken the internal adaptation procedures necessary to enable it to withdraw the reservations. Whilst the United Kingdom delegation would prefer a maximum extension of two years, it was prepared to accept a longer period or to agree that the matter be left to the Administrative Council. The Netherlands delegation expressed a similar view. 1132. The French delegation was prepared to agree to reservation periods being extended pursuant to a decision of the Administrative Council taken by a qualified majority, provided that the extension could not be more than five years. The German and Italian delegations took the same position. 1133. The Yugoslav delegation favoured the possibility of extension for a maximum of five years and felt that the country in question should be obliged to give reasons for its request. The Yugoslav delegation considered that the possibility of denouncing the Convention after the ten-year period, a point put forward by the German delegation to oppose any extension of this period, in fact argued in favour of extension in exceptional cases, since it would be a serious matter to oblige a State which had made every effort to make the necessary adaptations to withdraw from the Convention. It was therefore desirable that the Administrative Council should have the possibility of extending the period for reservations upon receipt of a reasoned request. 1134. The Netherlands delegation stressed the need to set a maximum limit for any extensions of the period for reservations which the Administrative Council might grant. 1135. After this initial exchange of views, the Chairman summarised the views expressed as follows: firstly, there was a consensus in favour of a five-year period of extension. The request for extension should be made, as the Greek delegation had suggested, on year before expiry of the ten-year period; secondly, there was the problem of the grounds on which such a request could be made: most of the delegations thought that the request should be accompanied by clear reasons; thirdly, with regard to the way in which the Administrative Council should take its decision, it seemed that, in view of the importance of the matter, the Committee might be in favour of a vote by qualified majority. 1136. The Committee was asked to vote on the French delegation's proposal, that an exceptional extension of the period for reservations for a maximum of five years should be granted by the Administrative Council, acting by a qualified majority, i.e. a 3 / 4 majority. The Committee adopted this proposal by 11 votes to 4 , with 3 abstentions. 1137. The German delegation stated that the matter of the reasons for the request for extension of the period should be properly clarified since the Committee had the choice between two positions: it could either be stipulated that valid reasons must be given, without however specifying such reasons, or, more precisely, a country making a request could be required to supply proof of the adaptations it had made so that reservations could be finally withdrawn at some later date. 1138. The French and Greek delegations stated that these positions were not at all incompatible, the main point being that the country making the request should supply information in support of its case. The Yugoslav delegation supported this view, considering that the request should simply be accompanied by reasons.

The French delegation proposed that the Committee take a decision on the following text which embodied this position: "The request for an extension, for a period not exceeding five years, must be accompanied by evidence that the State making the request is unable to withdraw the reservations, either in whole or in part, at the end of the ten-year period; the request must be submitted one year before the end of the ten-year period." The Swedish delegation supported this proposal, referred to under point 1131 considering that the United Kingdom delegation's proposal lacked clarity. 1139. The United Kingdom delegation stated that its proposal was more precise on this point, as the German delegation had pointed out; it therefore wished the Committee to express its views on its content. 1140. The Swiss delegation stated that the choice would be clearer if the countries which intended to make use of reservations could undertake to sign the Convention in the event of adoption of one of these two proposals. 1141. The German delegation explained that the United Kingdom proposal was in fact included in the French proposal and that a vote should therefore first be taken on the latter proposal. The Netherlands delegation expressed a similar view. 1142. Subject to subsequent drafting amendments, the French proposal was put to the vote. The Committee approved the proposal by 16 votes to 0 , with 3 abstentions. 1143. The German delegation raised a point concerning the period within which the request for extension of the reservations could be made. If the request was only made one year before the end of the period for reservations, the State concerned would not have time to denounce the Convention should its request be refused, since denunciation was subject to one year's notice. The German delegation would prefer the request for extension to be made two years before the end of the normal period for reservations, and proposed that this matter should be examined by the Drafting Committee.

(iii) UNEPA proposal (see M/83/II)

1144. The United Kingdom delegation re-iterated its support for the UNEPA proposal, while acknowledging the difficulties it could cause for some delegations. The principle of the proposal was in strict accordance with the requirements of countries used to the system of claims and examination; on the other hand it was obvious that other countries might meet with certain difficulties. In fact, the UNEPA proposal did not make any change, it merely clarified the problem of reservations with regard to patents containing differing claims: only claims relating to the fields covered by the reservations would be ineffective. The United Kingdom delegation pointed out that it would accept changes in wording and repeated its desire for clarification of the principle that a patent could not be revoked when a minor portion of its claims related to fields covered by reservations. The aim was not to interfere with procedure, but to limit the scope of reservations to the fields for which they were stipulated. 1145. The Greek delegation repeated its opposition to any procedural interference in the provisions concerning reservations; it could not therefore support the UNEPA proposal, submitted by the United Kingdom delegation. 1146. The Netherlands delegation queried the Greek delegation's objection, Rejection of the proposal would mean calling into question a provision of the Convention which

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made reservations still experienced serious difficulties in 1989, they could denounce the Convention in accordance with Article 173.

The German delegation was not totally opposed to the Portuguese proposal for progressive integration (M/72, paragraph 3) and could agree to discuss it subject to three conditions: firstly, accession by stages would have to take place within the time limits at present laid down; secondly, the stages of accession must not be decided arbitrarily but would have to be determined in advance on the basis of the International Patent Classification, which was divided into eight fields, meaning that there would presumably be eight stages; thirdly, a choice would have to be made between progressive accession as proposed by the Portuguese delegation and the application of the reservations at present provided for, since these two possibilities could not be combined. If these conditions were accepted the German delegation would be prepared to discuss the Portuguese proposal.

(b) discussions on the amended German proposal and on the proposed amendments submitted

1117. The United Kingdom delegation was broadly in agreement with the German delegation's statement. A compromise must be found since it considered that the essential point was to persuade and enable those countries which wished to make reservations to sign the Convention, falling which the present discussions would be a waste of time. 1118. The UNICE delegation considered that the wording of the original draft was a reasonable compromise and was prepared to support the German proposal, although it regretted the sacrifices which had had to be made in order to arrive at a consensus. It well understood the adjustment difficulties which would be encountered by countries which intended to avail themselves of reservations but considered that two of the conditions laid down by them were unacceptable, namely extension of the reservation period beyond the ten-year period and extension of their scope beyond chemical and pharmaceutical products. If these two conditions were accepted, the European system might well turn out to be less sophisticated than present national systems. 1119. The CEIF delegation supported the UNICE statement and stressed the harmful effects on markets of an interpretation whereby no rights could arise in the countries which had made reservations. 1120. Taking up the arguments put forward by the two preceding delegations, the EIRMA delegation re-affirmed its desire to reach a balanced compromise enabling the greatest possible number of States to accede to the Convention. 1121. The delegation from the Council of Europe felt that the term "product" could be interpreted in various ways in the field of chemistry and asked whether in practice chemicals should include all mixtures. 1122. The Chairman noted that the German proposal, minus paragraph 4, seemed to be an appropriate basis for a satisfactory compromise. He stated that there were still three problems to be settled: the principle of progressive accession, the periods for reservations and, finally, the UNEPA proposal. Agreeting with the German delegation's statement, the Portuguese delegation announced that it would submit a further proposal for introducing the principle of progressive accession.

(i) Principle of progressive accession

1123. The German delegation was prepared to adopt this proposal, provided that it fell within the stipulated ten-year period. This solution, which deserved careful examination, would enable areas to be extended in step with the progressive opening of the Office. 1124. The French delegation thought that, leaving aside the problems of time limits and procedure, the difference between the minimum and maximum positions lay in the extent of the range of patentability and wondered whether the extension of areas of technology in the provisions covering reservations might not jeopardise the minimum solution. 1125. The United Kingdom delegation noted that the Portuguese proposal was wide-ranging and stressed that it would only be possible to consider it in the context of the stipulated ten-year period. It stated that the proposal raised a problem in connection with voting rights: it was hardly possible to imagine that a State applying the protection provided for in the Convention to an extremely limited field would be allowed to vote. Furthermore, accession to the Convention involved financial obligations: it seemed unlikely that a State only applying the Convention to a limited field would be prepared to accept both the financial obligations and the restrictions of its right to vote. This proposal therefore raised complex problems which should be studied in greater depth; such a study would be a waste of time, however, if Portugal, which seemed to be the only country concerned, did not then accede to the Convention. 1126. The WIPO delegation noted that the Portuguese proposal, in its new version, provided a general solution to the problem of reservations which meant that it would no longer be necessary to mention in Article 166, paragraph 2, the fields in which reservations could be made. If the approach proposed by the Portuguese delegation were adopted, Article 166, paragraph 2, would be superfluous. 1127. Recalling that its proposal was an amendment to the German delegation's proposal accepted by the latter, the Portuguese delegation stated that limiting the principle of progressive extension to a fixed period would deprive its original proposal of much of its substance. It seemed impossible to properly define such a period: a period of ten years might just as well be too long as too short, it therefore urged acceptance of the principle of progressive extension without any time limit. 1128. The Netherlands delegation found it hard to accept this proposal which, in its view, departed too much from the original intentions with regard to reservations. 1129. The United Kingdom delegation also found the Portuguese proposal hard to accept: it was difficult to see how a country availing itself of such reservations could still remain a member of the Convention. If the Portuguese delegation's text were adopted, it would have to be studied in detail, particularly with regard to the wording: it would be particularly important to lay down an obligation to give prior notice of the exact extent of the fields in respect of which reservations were made and of the extension timetable planned by a country since otherwise applicants would be placed in an impossible situation. 1130. After several points on procedural matters, the Chairman asked the Committee to take a decision on the Portuguese proposal. First of all a vote was taken on the proposal without the words between square brackets "for a period of ten years from entry into force of this Convention"; the Committee voted against the Portuguese proposal by 13 votes to 6 with no abstentions. The Committee then voted on the same text this time with the words between square brackets.

The Committee rejected the Portuguese proposal to introduce into the provisions governing reservations the principle of progressive extension of the field of patentability by 9 votes to 6 , with 5 abstentions.

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reservations would not be required. However, the transition during the Luxembourg negotiations from the minimum solution to the maximum solution had made it necessary to provide for the possibility of reservations on the part of those States which could not accept the latter solution. As regards legal procedure, paragraph 4 of the German proposal in practice incorporated certain aspects of the maximum solution in the minimum solution, which was what the reservations in fact were.

The aim of the German proposal was to establish a point of connection between those States which supported the maximum solution and those which could not fully do so. However, if the latter could not support the German proposal, its basic objectives, which were in the spirit of the First Convention, would not be realised. There would then remain two possibilities: either the German proposal would have to be amended in order to achieve the aim set or the reservation provided for under sub-paragraph (a) would have to be deleted so that options would not be granted to States which had not expressed the need for them. Faced with this alternative the German delegation would, in a final compromise effort, agree to withdraw paragraph 4 of its proposal in the hope that those States which had expressed anxieties on that paragraph would sign the Convention and do all in their power to ratify it. The German delegation was well aware of the importance which the observer delegations attached to this paragraph but pointed out that given the choice between a certain number of States not signing the Convention or abandoning the principle of reversal of the burden of proof, the latter was the lesser evil. Although it had not envisaged the possibility of extending the period laid down in Article 166, the German delegation was in favour of this period being extended by the Administrative Council from 10 to 15 years. However, the inclusion of the original suggestion by the Netherlands delegation in paragraph 3 of the German proposal would already in practice constitute a compromise, since all the periods concerned would thereby be extended up to 13 years and even longer in the case of patents granted only after 5.6 or 7 years. The German delegation supported the UNEPA proposal to the effect that a patent should not lose all effect in those spheres not covered by the reservations, in accordance with the original principles and intentions underlying reservations. In conclusion the German delegation stated that it would withdraw paragraph 4 of its proposal in order to enable as many States as possible to accede to the Convention. 1108. In view of the importance of the German delegation's statement, the Chairman invited the other delegations to express their views. 1109. The Greek delegation thanked the German delegation for its attempts to reach a compromise. However, it wished the Administrative Council to be empowered to extend the period for which reservations could be made from 10 to 15 years if the (as yet unforeseeable) needs or interests of a State so required.

Commenting on the UNEPA proposal, the Greek delegation re-iterated its opposition to the reservation clauses containing provisions which interfered with procedural matters. 1110. The United Kingdom delegation fully supported the statement by the German delegation. It hoped that a period of ten years would be sufficient to enable changes to be made in the laws of the countries concerned, and understood the need for paragraph 4 to be withdrawn, although it was essentially justified. However, as regards the extension of the periods, it pointed out that the joint proposal by Greece and Turkey (M/99) had provided for an extension from ten to fifteen years in only the case of chemical products, and stressed the important concession made in paragraph 3 of the German proposal. In contrast to the original text, which provided that rights should take effect after the ten years of the reservation period, this paragraph provided that reservations should be effective throughout the currency of the patents concerned, which meant that in addition to an actual period of thirteen years, there would be a period the cumulative effect of which might extend beyond the next twenty years. The United Kingdom delegation could therefore not accept the possibility of a further extension of five years on top of a double extension of the periods. 1111. The Yugoslav delegation was grateful for the German delegation's willingness to arrive at a compromise. It would be all the more prepared to agree to paragraph 4 being withdrawn since Yugoslav laws already contained a provision of this nature. It would have liked to accept a patent system subject to no reservations if the economic and social development of Yugoslavia had placed it in a position to do so. However this problem, which had been raised at the beginning of the Conference, led it to fear that the reservation period was too short. Whilst the Greek proposal empowered the Administrative Council to grant an extension of five years or more at the justified request of a State, it also enabled each State concerned to withdraw its reservations as soon as circumstances permitted. The Yugoslav delegation stated that the very fact that it had taken part in the preparatory work of the Conference was an indication of Yugoslavia's desire to establish a sophisticated patent system similar to that of other European States and asked the Conference to consider, for the reasons already stated, the possibility of extending the reservation periods by 5 years. 1112. The Portuguese delegation supported the German delegation's statement and, in a similar spirit of compromise, wished the principle of progressive participation in the Convention contained in paragraph 3 of its proposal to be combined with the German proposal in its present form. 1113. The French delegation also concurred with the German delegation's statement. It suggested that the real scope of the reservation periods be examined in greater detail in order to establish whether the Administrative Council should be empowered to grant an additional extension of 5 years. In conclusion it drew attention to the effect of reservations on patents covering processes or products, a problem which the UNEPA proposal, taken up by the United Kingdom delegation, was intended to resolve. 1114. The Greek delegation stated that the Administrative Council's power to extend the reservation period should be strictly limited to five years and should be applied only in cases of force majeure. In this way, when the time came for reservations to be withdrawn, there would still be a way out for any State encountering difficulties in a particular sector, such as pharmaceutical products. 1115. The Spanish delegation thanked the German delegation for its attempts to achieve a compromise and stated that it could in principle accept the German proposal, although it had not received any specific instructions enabling it to give a formal decision. 1116. The German delegation noted that the five States concerned still wished the reservation period to be extended beyond ten years but that its proposal did not provide for such an extension. On the optimistic assumption that the Convention would be implemented in 1976, the first patent for a chemical or a pharmaceutical product would enter into force at the earliest in 1989 for those States which wished to make reservations. This would give a total period of sixteen years within which the States concerned should be able to make adjustments to their economic systems and industrial protection laws. Progress made by Yugoslavia during the last sixteen years gave grounds for optimism on this point. However, if certain States which

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compromise intended to enable as many States as possible to accede to the Convention. The German delegation proposed to extend the reservations to chemical products. It also suggested that the burden of proof should be reversed in those fields in which the reservations applied, so as to facilitate the exercise of rights attached to a patent. It was true that Main Committee I had rejected a provision of this nature as a whole, but the circumstances of the discussion had now changed, since the reservations made it possible to exclude protection conferred in respect of a product. The German delegation therefore felt that, to compensate for the extension of reservations to cover chemical products, where a State availed itself of the reservations the burden of proof should be reversed in order to strengthen the rights attaching to a patent for a process; this would also ensure, indirectly, a certain degree of protection for products. 1095. The United Kingdom delegation supported the German proposal but wished it to be supplemented by the provisions contained in M/83 which would entail replacing the words "European patents" by "claims in European patents" in paragraph 2(a) of the present text of Article 166. Extending reservations to cover chemical products and prolonging their application beyond 10 years in respect of patents filed in the period during which the reservations had effect would enable States which so wished to progressively establish the protection system over a period of more 20 years. This constituted a very considerable amendment of the present text which went towards meeting the legitimate demands of certain countries. The United Kingdom delegation pointed out that the possibility of making reservations would not be confined solely to those countries which had expressly stated their need for them. Apart from the countries of the Common Market, which were bound by other commitments, other countries might also be interested in availing themselves of the reservations. The importance of the proposed provision would clearly be even greater for countries which intended to apply reservation clauses to chemical products. The United Kingdom delegation supported the German proposal, in the conviction that it satisfied the legitimate interests of the countries concerned. 1096. The Yugoslav delegation disagreed with the German proposal to reverse the burden of proof. Whilst Article 101 did refer to this principle, during the discussions on Article 67 and Rule 28 in Main Committee I the principle of reversal of the burden of proof had been twice rejected and it had been stressed that this was a matter for national legal procedures and not for the Convention. This principle should therefore not be re-introduced as regards processes. The Yugoslav delegation also felt that the reservations should only relate to claims concerning a product; processes would therefore continue to be protected and it would not be necessary for the burden of proof to be reversed. 1097. Whilst the Netherlands delegation had no objections to the German proposal, it wondered on what arguments it was based. The delegations of certain countries had claimed that only their proposal could make the Convention acceptable to them and it was therefore important to establish whether the provisions set forth in the German proposal would enable those countries to accede to the Convention. 1098. The Greek delegation pointed out that it reserved the right to request that the period for which reservations could be made be extended from 10 years to 15 years for pharmaceutical products. Furthermore, it found it rather difficult to understand how the principle of reversal of the burden of proof could now be re-discussed since it had already been expressly rejected. It would reject the German proposal as a whole if the burden of proof were reversed. 1099. The German delegation stated that its proposal was a real attempt to arrive at a compromise with those States which had difficulty in accepting Article 166 in its present form. As the Netherlands delegation had pointed out, it was important to establish the views of the States concerned. If they did not intend to accept its proposal the German delegation might withdraw it after consulting the United Kingdom delegation, which had supported it. 1100. The Yugoslav delegation agreed that it could accept many of the provisions contained in the German proposal. However it considered the period for which reservations could be made to be too short. The aim of the exercise was not to haggle over time periods but to take account of each country's respective capabilities. 1101. The Portuguese delegation could support paragraph 1 of the German proposal but not paragraph 4. It might be possible to find a sound basis for a compromise by using paragraph 4 of the German proposal and paragraph 3 of the Portuguese proposal. The Portuguese delegation finally wondered whether the German proposal should be voted on as a whole, since it contained certain provisions which were unacceptable to the States mainly concerned. 1102. The Spanish delegation did not consider that the German proposal constituted an acceptable compromise formula and was surprised that the principle of reversal of the burden of proof, which had already been rejected, had been brought up again in a compromise proposal. 1103. The Greek delegation considered that certain provisions in the German proposal were dangerous. The implementation of reservations would mean that the Convention would not apply in a given sector and in a given State, and to introduce procedural elements into the Convention would therefore mean no certainty as to the principle of the legal enforceability of reservations, although it was essential to have this certainty. For similar reasons the Greek delegation could not support the proposal by UNEPA and suggested that the German delegation take out the principle of reversal of the burden of proof from its proposal. 1104. The Turkish delegation shared the Greek delegation's misgivings, and subscribed to its suggestions concerning paragraph 4 of the German proposal. 1105. The Netherlands delegation noted that countries intending to avail themselves of reservations could accept the German proposal, apart from paragraph 4, as a basis for compromise. It asked the Greek delegation to restate its position on the UNEPA proposal. The Greek delegation replied that it wanted that proposal to be withdrawn. 1106. The Yugoslav delegation, whilst accepting the German proposal as a basis for discussion, wished the period for which reservations could be made to be extended beyond 10 years and supported the views of those delegations which objected to paragraph 4 of the German proposal. 1107. The German delegation noted that the arguments concerning its proposal centred mainly on paragraph 4, which dealt with the reversal of the burden of proof. The circumstances under which Main Committee I had rejected this principle had changed considerably now that reservations were to be extended to cover chemical products, and the decision of Main Committee I could not therefore be binding on the present discussion. The problem of reservations was crucial in the context of the original aims. When preparatory work had been split, further to a proposal by the French Government, with the aim of drawing up two Conventions, it had been intended that the first should, in the context of a minimum solution and in order to obtain the support of the greatest possible number of countries, provide for the setting up of a uniform procedure up to the grant of the European patent with national law applying thereafter. Under such a system

C. Proposal by Yugoslavia

1078. The Yugoslav delegation stated that countries faced with the need for industrial development could not be expected to give up the efforts which they had made in this direction nor to surrender their sovereignty under a Convention the scope of which had been enlarged by the adoption of the maximum solution. It would take several decades and considerable sacrifices would have to be made before a level of development was achieved which would make it possible to accept an integrated patent system. As it stood at present, the Convention imposed a system for protecting chemical, pharmaceutical and food products on all the Contracting States which would have implications in all spheres of commercial life: both small- and large-scale industries, consumers and even social welfare services would be affected. Since it was no longer possible to question the adoption of the maximum solution with all the consequences this involved, the Yugoslav delegation had attempted to draw up a proposal (M/102) embodying a compromise which would extend to 15 years the period for which reservations could be made and enable them to cover chemical products as well. In acceding to a European patent system, Yugoslavia would encounter considerable difficulties in various fields, but it was its very desire to be party to such a system that made the Yugoslav delegation adopt so firm a position. 1079. The Spanish and Portuguese delegations supported the Yugoslav proposal. It was also seconded by the Greek delegation which pointed to the aim of achieving a compromise solution. The Turkish delegation shared this view. 1080. The Netherlands delegation considered that Article 166 as it stood was the outcome of a satisfactory compromise and that, although it might be possible to arrive at a better compromise, it considered the Yugoslav proposal to be unacceptable in view of the Committee's interpretation of paragraph 4. 1081. The Committee rejected the Yugoslav proposal (M/102) by 9 votes to 7 , with 4 abstentions.

D. Joint proposal by Greece and Turkey

1082. The Turkish delegation stated that whilst this proposal was not very satisfactory for Turkey, it constituted the minimum compromise acceptable to the five States which objected to Article 166 in its present form and would enable the common desire expressed in the Preamble to the Convention to be realised. 1083. The Greek delegation stated that the aim of the proposal which it had submitted jointly with the Turkish delegation was to achieve unanimity on a serious political problem whilst taking account of the difficulties previously described. The proposal was to extend the period for which reservations could be made in the fields at present specified to 15 years and to include the possibility of making reservations in respect of chemical products for a period of only 10 years. The last paragraph of the proposal embodied the Committee's interpretation on the question of the point at which rights arose and gave it a precise legal formulation. In contrast to the procedure for earlier proposals it would be possible to deal separately with the two major points of the joint proposal put forward by the Greek and Turkish delegations. If the first point concerning the introduction of two separate periods for reservations, depending on the product, was accepted, the Greek delegation thought that the second point could be merged with a paragraph in the German proposal which reflected an identical viewpoint. 1084. The Chairman asked the Committee whether the points contained in the joint proposal by Greece and Turkey should be voted on separately, and pointed out that a negative vote on the proposal as a whole would not necessarily mean that all its individual parts would be rejected. 1085. On this question of procedure the Netherlands delegation considered that all proposals should be dealt with in the same manner. 1086. The Yugoslav delegation supported the view of the Netherlands delegation. It also expressed its astonishment at the advice given here and elsewhere to those countries which wished to amend Article 166; the content and tone of such advice were not usual at a Diplomatic Conference. The Yugoslav delegation furthermore considered that the criticism made of the patent system at present in force in Yugoslavia was the result of mistaken assumptions. It would be advising its Government to request official confirmation of the point of view put forward by one organisation. Yugoslavia had been one of the founder members of the Paris Union and in fact had a protection system identical to that of many other European countries. 1087. The Turkish delegation confirmed the point of view previously put forward by the Greek delegation. The Spanish delegation suggested that the German proposal be dealt with at the same time but the Greek delegation repeated its view on the procedure to be followed. This was that only after the proposal for a two-fold system of reservations had been dealt with might it be appropriate to link the German proposal (M/116) to the second point of the joint proposal submitted by Greece and Turkey (paragraph 5 of M/99). 1088. The Chairman suggested that any vote on the individual parts of the proposal should be preceded by a vote on the whole. 1089. Whilst agreeing to a vote on the proposal as a whole, the German delegation pointed out that it would have been able to accept certain provisions contained in proposals already submitted, in particular the principle of progressive integration embodied in paragraph 3 of the Portuguese proposal. However, each proposal should be considered as a balanced whole which might be destroyed by voting Article by Article. However, once agreement had been reached on a proposal, the provisions proposed by certain delegations should be re-examined. 1090. The Greek delegation clarified one procedural matter. If a proposal was voted upon as a whole it would be impossible to take certain provisions from it, but it should remain possible to add other parts of provisions to the text in question even if these were drawn from a proposal which had been rejected as a whole. 1091. The United Kingdom delegation suggested that the joint proposal by Greece and Turkey be voted on as a whole since certain provisions could always be taken over from it in the form of an amendment to the German proposal to be dealt with subsequently. 1092. The Greek delegation pointed out that the first provision in the proposal which it had submitted jointly with Turkey, for two periods for reservations, was not contained in the German proposal. The principle of this provision could therefore be taken over in the form of an amendment after the proposal had been voted upon. 1093. The Committee rejected the joint proposal submitted by the Greek and Turkish delegations by 11 to 8 , with 1 abstention.

(a) discussions on the original proposal

1094. The delegation of the Federal Republic of Germany submitted its proposal (M/116) which was an overall

III. Discussion of the proposal

1065. The Chairman noted that the UNEPA proposal satisfied the necessary requirements and could therefore be considered by the Committee. He then listed the various proposals which had been made: proposals by Portugal (M/72), Spain (M/29), joint proposal by Greece and Turkey (M/99), proposals by Yugoslavia (M/102), UNEPA (M/83), the Federal Republic of Germany (M/116) and the Netherlands (M/93). These proposals would be discussed in the reverse order of their proximity to the current wording of Article 166. The Portuguese proposal, being the furthest removed, would be discussed first.

A. Proposal by Portugal

1066. The Portuguese delegation, which had taken part in the preparatory discussions with the aim of including Portugal in the European patent system, maintained its proposal which, without wishing to go to extremes, constituted a prerequisite for accession by Portugal. Furthermore, the principle of progressive agreement referred to in its proposal had been based on Article 161 of the Draft Convention. The Portuguese delegation asked the Committee to give an opinion in the light of these considerations before giving its support to any proposal along lines similar to those indicated by Portugal. 1067. The Netherlands delegation deplored the maintenance in its entirety of the Portuguese proposal, which the majority of the Committee had implicitly deemed unacceptable. It felt that the countries in question might well have done better to draw up a potentially acceptable joint proposal, and maintained its original views as regards the Portuguese proposal. 1068. The Chairman pointed out that proposals could not be put to the vote unless they were seconded by another delegation, whereupon the Spanish delegation lent its support to the Portuguese delegation. Following a question put by the Austrian delegation, the Chairman indicated a preference for a vote on the whole of the Portuguese proposal rather than on individual parts thereof. 1069. The Portuguese delegation once again outlined the rationale of its proposal. In view of the fact that a number of countries were unable to shoulder all the various obligations under the Convention immediately, the Portuguese proposal had been based on the principle of gradual integration: rather than reject all obligations or even permit their nationals to take advantage of the facilities offered by the European Patent Office, the countries concerned by this problem were ready to accept a certain number of constraints immediately. Quite irrespective of the examples and arguments adduced by certain delegations with reference to the interests of developing countries, the Portuguese delegation wondered whether the so-called compromise offered by Article 166 had been achieved to their advantage. Gradual integration would, on the contrary, facilitate total accession, as the development of the fields of technology covered by the Convention would induce calls for protection in other fields. The Portuguese delegation was sensible of the difficulty of the cause which it had pleaded, and concluded by emphasising the drawbacks which would ensue if a large number of countries did not accede to the Convention. In reply to a question put by the Chairman, the Portuguese delegation evinced no objections to a vote on its proposal as a whole, while stressing the basic importance of paragraph 3 as contained therein. 1070. The Portuguese proposal was put to the vote on a proposal by the Chairman. The Committee voted against the Portuguese proposal by 11 votes to 6 , with 3 abstentions. 1071. The Portuguese delegation continued to support the principle of gradual integration, to which it attached special importance. The Chairman noted that the Portuguese proposal had been rejected as a whole, and declared the debate closed on this matter, which the Portuguese delegation was at liberty to bring before the Committee of the Whole. The Portuguese delegation stated that it wished to retain paragraph 3 of its proposal and was supported in this procedural decision by the Greek delegation.

B. Proposal by Spain

1072. The Chairman noted that on the basis of the order in which proposals were to be discussed, it was now the turn of the Spanish proposal, in view of the position adopted therein with regard to the reservation period. The Netherlands delegation pointed out that the Spanish proposal merely contained principles for amending Article 166, and was not framed in the form of actual amendments. The Spanish delegation considered that the principles underlying its statement were sufficiently explicit to constitute amendments and that the precise wording of the proposals could be referred to the Drafting Committee subsequently. The Chairman accepted this point on the grounds that it was not basically contrary to the Committee's working methods. In reply to a question put by the Netherlands delegation, which expressed concern as regards the effect which the rejection of the principles underlying the Spanish proposal would have on other proposals of similar scope relating to certain fields, the Chairman pointed out that no opinion expressed by the Committee in the form of a vote could affect any part of another proposal; while it might be feasible to have a vote paragraph by paragraph, such a procedure would, at least for the time being, only jeopardise the harmony of proposals. 1073. The United Kingdom delegation, speaking in support of the Chairman's opinion, considered that it was preferable to express an opinion on a proposal as a whole, on the grounds that if the proposal were rejected in its entirety, this did not automatically mean that the various parts contained in it had also been rejected. Each proposal was a coherent whole and it would therefore be ill-advised to express an opinion on one of these parts in isolation, as would be the case in taking a decision out of context solely on the principle of extending reservations to chemical products. 1074. The Yugoslav delegation recalled that it had supported the Spanish proposal as set out in M/67. Despite the slight amendments which had since been made to the document, the Yugoslav delegation wholly concurred with the Spanish proposal. The Portuguese and Turkish delegations subscribed to the same opinion, as did the Greek delegation despite the differences between its own proposal and that submitted by the Spanish delegation. 1075. Before the vote, the Spanish delegation briefly recalled the reasons underlying its proposal: the lengthening of the reservation period and the extension of reservations to take in chemical products was intended to allow accession to the Convention by countries which would otherwise be faced by considerable economic difficulties. 1076. In reply to the question put by the Netherlands delegation, the Spanish delegation pointed out that the reservation period given in its proposal was to be considered as indefinite and was to be left to the discretion of the Governments concerned. 1077. The Committee voted against the Spanish proposal by a majority of 11 to 6 , with 3 abstentions. The Chairman then called upon the Committee to turn to the proposal submitted by Yugoslavia.

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Article under discussion could not make allowance for priority rights based on a national application filed in the previous year. However, the Danish delegation thought that there was a case for taking the priority date into account. 1051. The Greek delegation pointed out that paragraph 5 of the proposal which it had submitted jointly with Turkey did in fact resolve the inconsistency shown to be inherent in the German proposal. 1052. The Chairman noted that as regards the problem originally raised by the French delegation, all the opinions expressed were in concordance with the principle underlying paragraph 3 of the German proposal, and noted that the Committee had unanimously agreed on the matter. 1053. The UNICE delegation drew the Committee's attention to a point which had previously been made by the French delegation. Proceedings to date had turned solely on reservations concerning patents granted in respect of products. A patent could contain a number of claims, some of which might relate to a product and some to a process. Reservations could not be applied in the latter case, with the result that certain amendments should be made to the wording to ensure that only claims relating to products - but not the entire patent - would be deemed not to have arisen. 1054. The CEIF delegation pointed to the consequences inherent in the opinion put forward by most of the Governmental delegations. The current interpretation of Article 166 would mean that for a period of at least 21 years, two sets of arrangements with extremely varied economic features would co-exist, the one affording normal protection and the other no protection at all. Allowing for the priority year, this period would be a minimum of twenty-one years and could extend to thirty-one years, always assuming that the reservation period did not exceed ten years. In view of the rapid changes in economic conditions, any attempt at legislation on the basis of such distant horizons could well prove to be rash. While it was necessary to take into account the interests of the less-developed countries, it would be unfortunate if such action were to favour firms from other countries which would not fail to exploit the possibilities afforded by the simulataneous existence of two different sets of protection arrangements. Accordingly, the CEIF delegation maintained its original position which favoured a cut in the reservation period. The correlation between industrial development and the existence of a solid system of protection had been clearly demonstrated, and it was therefore desirable that such countries adopt a system of this nature in order to move rapidly towards a satisfactory level of development. 1055. As to the legal aspects of the problem, the IAPIP delegation contended that a reservation did not negate the right conferred by a patent, but merely suspended use of the right which had arisen. This contention was upheld by two lines of argument. Firstly, a patent could be granted during the reservation period: this therefore meant that rights had indeed come into existence but that they had simply been suspended by certain countries for a given period. Secondly, as reservations left intact the system for the grant of patents and all resultant rights, the legal effect of reservations was merely to suspend the effects of such rights for a strictly limited period. The IAPIP delegation then turned to the problem of the rights of those persons who had begun putting an invention to use in countries which had entered reservations. It felt that a solution should be found which would respect any acquired rights and not infringe the fundamental principle that reservations were not to jeopardise any of the arrangements enshrined in the Convention. 1056. The CPCCI delegation held that it was essential that the protection arrangements currently under discussion be aligned and put into practice as quickly as possible. Although it had called for the reservation period to be cut back to five years, it found it difficult to believe that the period could be as long as previously indicated. 1057. The Netherlands delegation pointed out that the concept of reservations had no intrinsic legal character and that its scope could only be defined on the basis of an interpretation of the texts in which it was set forth. A clear definition should therefore be given of the significance which was to be assigned to reservations. 1058. The Turkish delegation indicated that the original request for clarification made by the French delegation was in fact attributable to the ambiguous nature of paragraph 3 of the German delegation's proposal. 1059. The Yugoslav delegation pointed to the old saying of Roman law that "quod ab initio non valet in tractu temporis non convalescer". The same applied to reservations which, once withdrawn, could no longer give rise to any rights. As regards the economic aspects of the matter in hand, the Yugoslav delegation claimed that the arguments put forward to date had no basis in fact, inasmuch as protection in respect of processes would exist despite any reservations (accordingly, at the end of the reservation period, protection in respect of products, which did not exist in the countries concerned, could not enter into force. Protection in respect of processes would be valid ab initio and would continue to protect the proprietor of the patent from all forms of infringement). 1060. The CCI delegation wished to pay particular attention in the course of these discussions to the interests of developing countries. It was considerations such as these which had underpinned the CCI position as regards Article 166, despite the fact that the countries in question did not in every case hold to this point of view. The CCI delegation went on to point out that the national committees of its organisation had supported this viewpoint in the countries in question. In view of these considerations, any extension to Article 166 would be at variance with the real interests of these countries. 1061. The Chairman noted that none of the Governmental delegations subscribed to the opinion which had been generally supported by the interested circles and consequently declared the discussions closed; the withdrawal of reservations was to be interpreted as in paragraph 3 of the document submitted by the Federal Republic of Germany (M/116/II).

B. Revocation of independent claims in categories subject to reservations; maintenance of the patent

1062. The UNEPA delegation called for clarification as regards Article 166, paragraph 2(a), which stipulated as a possible reservation that European Patents in respect of food and pharmaceutical products would "be ineffective or revocable". Together with Rule 30 which made provision for independent claims for a process, apparatus or means designed for carrying out the process or for a product, paragraph 2(a) meant that claims in the food and pharmaceutical areas would be ineffective or revocable. Consequently, the patent would not be revocable in toto. This point should in any case be clarified, and any necessary instructions should be given to the Drafting Committee. 1063. The United Kingdom delegation subscribed to the proposal outlined by the UNEPA delegation, whereby the words "Claims in" should be added to the beginning of paragraphs 2 and 3 of Article 166. 1064. The French delegation endorsed the UNEPA proposal on the grounds that only claims relating to a product were without effect in those categories subject to reservations.

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1033. The German delegation agreed with the Netherlands delegation that there was no point in setting up a working party. On the other hand, it would be desirable for the delegations in favour of amending Article 166 to get together to draw up a solution which, in the light of the discussions, would be likely to gain the support of a vast majority. It might be possible to set up a working party on the basis of such a proposal. 1034. The IAPIP delegation pointed out that the compromise envisaged by the Swedish and Austrian delegations concerned only the extension of the period, and was against extending the scope of the reservations to include chemicals; it therefore suggested finding out whether a majority of the Main Committee was likely to agree to an extension of the period: if this were so, one delegation could draw up a concrete proposal along those lines. 1035. The French delegation expressed its agreement with the Netherlands, United Kingdom and German delegations: the setting up of a working party could only be considered on the basis of proposals which had first been amended by the delegations concerned. 1036. The Luxembourg delegation supported the procedural proposal made by the IAPIP delegation and suggested that the principle of a compromise on that basis be put up for discussion. 1037. In the absence of any concrete proposal, the Chairman did not think it would be useful to discuss the question of extension of the period. Since reservations had been expressed regarding the setting up of a working party, it would be preferable for the five countries which had made or supported proposals for amendments to Article 166 to meet to prepare an improved version of that Article along the lines of the amendments suggested by certain delegations. It would then be possible to take a decision on extension of the period on the basis of a concrete proposal.

A. Origination of rights

1038. When discussions resumed, the French delegation drew attention to a problem already raised by the Netherlands delegation (M/93): i. e. whether, in a Contracting-State making use of the reservations provided for in Article 166, the rights corresponding to patents had not arisen or whether, on the contrary, these rights existed but their exercise was temporarily suspended. The first case, which corresponded to the Netherlands proposal, meant that no patent application filed during the reservation period would result in any protection for the products in the country concerned. Consequently, no protection could ever be afforded. In the second case, the right corresponding to a patent application filed during the reservation period could be exercised as soon as that period had ended, account also being taken of any acquired rights. In the face of this alternative, the period of ten years at present provided for in Article 166 could correspond either to an actual period of from ten to thirty years, or to an actual period of ten years. On the basis of these considerations, the French delegation stressed the need to determine which should be the case. 1039. The Chairman recalled the link between the French delegation's observations and the problem as set out by the Netherlands delegation in M/93. The Netherlands delegation confirmed this viewpoint and endorsed the explanations given by the French delegation, without specifying any further details. The Chairman pointed out that a choice had to be made between the two hypotheses put forward as regards the legal significance of reservations. 1040. The Yugoslav delegation considered that the only valid interpretation was that no right could come into existence during the reservation period. This position was in line with that put forward by the delegation of the Federal Republic of Germany in M/116, paragraph 3. 1041. The Spanish delegation endorsed the opinion of the Yugoslav delegation and emphasised that this interpretation was in line with Article 166 as it now stood. 1042. As it had already specifically indicated in M/116, the German delegation held that no rights could come into existence in those countries which had entered reservations. As the present text was not explicit on the matter, the proposal in hand was an attempt at achieving a compromise acceptable to those States which wished the scope of reservations to be extended. 1043. The Portuguese delegation concurred with the statement made by the Yugoslav delegation, which had already been supported by the Spanish delegation. 1044. The Greek delegation recalled that the proposal which it had tabled jointly with the Turkish delegation (M/99) contained a paragraph along the lines of the proposal by the German delegation. 1045. The United Kingdom delegation was of the opinion that the principle underlying the proposal by the delegation of the Federal Republic of Germany could be accepted only if accompanied by a reasonably short reservation period. As the French delegation had pointed out, on the basis of the ten-year period as laid down at present, protection could in certain cases extend over a period of twenty years with result that in certain countries there would be a sort of cumulative effect which would extend over an even longer period. In this connection the United Kingdom delegation stressed that any final position adopted in the matter would have to take account of the other proposals which had already been put forward. 1046. The Netherlands delegation recalled that it had made a proposal on the matter (in M/93), whereby Article 166, paragraph 4, would be amplified. Moreover, it noted that the German delegation's proposal contained a paragraph 3 along the same lines: it should therefore be ascertained that there was no contradiction between paragraph 3 of the German proposal and Article 166, paragraph 4, which had become paragraph 6 of the proposal. 1047. The delegation of the Federal Republic of Germany felt that on the basis of its interpretation Article 166, paragraph 4, as it now stood did not conflict with its own proposal. The aim of paragraph 4 was to prevent any explicit intervention by the States concerned when the reservations were terminated: thus, all the reservations would automatically cease to have effect at the end of the transitional period, and there was no contradiction with M/116. 1048. Despite the additional information furnished by the German delegation, the Netherlands delegation pointed out that there still remained some doubt as to whether the two paragraphs in question were entirely consistent with one another and called for a slight amendment to Article 166, paragraph 4, to ensure that it did not restrict the scope of paragraph 3 of the German proposal. It felt that the matter could be referred to the Drafting Committee. 1049. The United Kingdom delegation was totally in agreement with the Netherlands delegation's view that slight amendments would have to be made to align paragraphs 3 and 6 of the German proposal. The appropriate amendments were, however, a matter for the Drafting Committee. 1050. In reply to a question but by the Belgian delegation, the Chairman confirmed that the ten-year period laid down in the

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countries should be considered in the context of industrial development. The example of German legislation was particularly instructive in this respect. When German patent legislation entered into force, in the eighties of the last century, in the chemical field, there was a very large number of inventions of processes, while today the development of science and technology had produced a predominance of inventions in the field of the search for new substances. Countries which at present wished to develop their chemical industries should bear in mind the fact that the protection of products was a sine qua non of modern science and technology. As regards the economic aspects of the problem, the COPRICE delegation recalled that the rules applicable during the first half of this century had been designed for closed markets. This was no longer the situation today; countries which intended to take part in this Convention had to accept the existence of open markets. States which wanted to make use of reservations should therefore be guided by these economic considerations and eschew erroneous historical examples. 1020. The Netherlands delegation expressed its doubts as to the value of reservations, and considered that Article 166 already represented a compromise. The Portuguese proposal (M/72/II) was unacceptable and could not therefore serve as the basis for any fruitful discussion. 1021. The Belgian delegation supported the arguments of the United Kingdom and French delegations, opposing any extension of reservations. 1022. The Swedish delegation recalled Sweden's successful development of industry from almost nothing under the protection of a strict patent system, and stated that its position was very close to the principles expressed by the French and Danish delegations. If it appeared desirable to seek a new compromise which went further than the present version of Article 166, itself the result of long discussions, it might be found in a possible extension of the transitional period but certainly not in an extension of the technical fields covered by the reservations. 1023. The FEMIPI delegation opposed the extension of the reservations to chemical products, and wanted the duration of the transitional period to be reduced from 10 years to 5 . 1024. Although Austrian legislation only provided for the protection of processes, and not of products, in the chemical, pharmaceutical and food fields, the Austrian delegation agreed that products should be given protection. It was however sensible to the anxieties expressed by those States which were alarmed by the consequences of a provision to this effect and it therefore preferred to seek a compromise - the Swedish delegation's proposal was in the right direction - which would avoid the risk of eliminating a number of States from the Convention. The value of the Convention would in fact be a function of the number of States acceding: this fact should be borne in mind when a compromise was being sought. 1025. The German delegation considered that the discussion prompted by Article 166 presented a number of aspects. Firstly, the desire to create an extensive, secure and modern system of protection in Europe implied the existence of rules governing chemical and pharmaceutical products. Although a system of protection in this respect had been instituted only recently in Germany, it could not be claimed that no protection had been provided previously. In fact, apart from protection for processes, identical to that of certain countries which wished to amend Article 166, there had also been protection for products directly prepared by those processes, the law even going so far as to presume the identity of a similar product and the product prepared by means of the process in question. However, in spite of fears expressed in various quarters, protection of products in the chemical field had been introduced into the legislation four years ago. The fears expressed had been shown to be unfounded; for that reason the German delegation wished to see such protection included in the Convention. Furthermore, it favoured the maximum solution which was a necessary condition for a secure, attractive European patent.

There was another principle on which the Convention was based: that of very extensive territorial protection. For that reason, the German delegation had accepted Article 166, which took into consideration the difficulties encountered by certain States in order to enable them to accede to the Convention. Although the German delegation thought that Article 166 was extremely important, it considered that its present extent should be sufficient. The period of 10 years provided for at present meant that in practice reservations might be made until 1985-1986. Although it was prepared to consider a compromise, always provided that it included a definite time limit, the German delegation thought that a period of 10 years was sufficient: it could not therefore agree to any extension. As regards the extension of the scope of reservations, the German delegation subscribed to the arguments put forward by the United Kingdom delegation. Such an extension would run counter to the Convention, the European patent, and even the interests of the countries which planned to make use of it. In conclusion, the German delegation stressed that Article 166 was a satisfactory compromise; its scope should not therefore be extended. 1026. The Luxembourg delegation supported the idea of a minimum compromise expressed by the Swedish and Austrian delegations. 1027. The Finnish delegation was opposed to any fundamental amendment of Article 166; it agreed, however, to discuss a possible extension of the transitional period while upholding the principle of a fixed time limit. 1028. After these observations had been made, the Yugoslav delegation stated its position and stressed that it did not exclude all patentability for chemical and pharmaceutical inventions. For political and economic reasons it had to refuse to grant protection for products, although it was not opposed to other means of protecting inventions, as its legislation provided. 1029. The Chairman concluded that it was possible to group all these reactions in three basic positions: firstly, there were those countries which had made or supported proposals for the extension of reservations; secondly, there were those countries which wished to retain Article 166 as it stood; thirdly, there were those countries which had rejected all amendments proposed so far for discussion, but which were prepared to seek a compromise on certain points. Noting that the Main Committee would inevitably reject the proposals made so far, the Chairman suggested that one delegation or a working party should draw up a new proposal likely to satisfy the Committee as a whole, along the lines of the observations which had provided some hope of a compromise. 1030. Approving the Chairman's suggestion, the Greek delegation requested that a working party be set up, and was supported in this request by the Portuguese delegation. 1031. The Netherlands delegation was not opposed to the drafting of new proposals by one or more delegations, although it hoped that this would not delay proceedings unduly; it was not, however, in favour of setting up a working party. 1032. In support of the Netherlands delegation's position the United Kingdom delegation said that there was no point in setting up a working party since, strictly speaking, there was no problem to be resolved as most delegations were in favour of the present version of Article 166. It was therefore up to the delegations which wished to effect amendments to attempt to rally sufficient support by drawing up new proposals.

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should be able to enter reservations. The UNICE delegation also considered that the reservations contained in Article 166 as it now stood were adequate and well-balanced in view of the objective sought. 1014. The CEIF delegation considered that the concern of some European countries was without foundation. The reference to the economic conditions which had influenced the patentability of chemical products in the past was no longer relevant. Although some countries were not as advanced as others in certain sectors of industry, their gross national product was nonetheless growing very rapidly. This was particularly true for Spain which at present had one of the highest rates of growth in the world. The development of international trade in general and of European trade in particular was extremely important for these countries and the other States of Europe. The introduction of reservations raised grave difficulties on the economic level. Today it was, in fact, very difficult to deliberately introduce technical barriers to trade in an area as vast as Europe, especially since this was an area where the importance of inventions was particularly great. Patentable inventions in chemicals accounted for between 35 and 40 % of all inventions: if exceptions to patentability were extended to cover all chemical products, the exclusion of these products as well as food and pharmaceutical products would account for nearly half of the patentable field. The cost of chemical research and development was extremely high, which explained the great number of patented chemical inventions; the cost of research and development in electricity, for example, amounted to 3 % of a company's turnover, in electronics to 5 %, in chemicals to 6 or 7 % and in pharmaceuticals to 10 to 20 %. In developing countries, therefore, real industrial investment in research and development would only be encouraged if inventions could be patented in these fields in which the potential gains from research and development were the greatest.

On the basis of these considerations, the CEIF delegation considered that reservations should only be permitted for short, precisely defined periods of time for strictly delimited industrial sectors. CEIF's position on this issue was given in preparatory document M/22, point 10.

The CEIF delegation also commented on the effective length of the period during which reservations would be effective. If account were also taken of the time necessary for the Convention to enter into force after it had been signed, a period of 10 years would in practice mean 13 or 14 years from today. For those reasons CEIFrequested that the period be reduced to 5 years. 1015. The Danish delegation supported the comments of the United Kingdom and French delegations. It also stressed the importance of the chemicals sector in patents. In Denmark, at least 40 % of patent applications concerned chemicals.

The Danish delegation cited its own experience as regards the length of the reservation period. When discussions were taking place in the Council of Europe concerning the negotiation of the Strasbourg Convention on the unification of certain points of substantive law on patents for invention, Denmark had itself requested that reservations be permitted for pharmaceutical and food products and it could therefore understand the concern expressed by certain other participating countries. Ten years later, however, the situation had so changed that Danish industry and agriculture no longer had any need to make use of reservations: the period of 10 years provided for in Article 166 might therefore be considered to be a valid compromise between the reduction sought by a number of organisations and the extension advocated by certain delegations. 1016. The Italian delegation stated that, even if as a future

Contracting State of the Community Patent Convention it was not directly concerned by the possible use of reservations, it was closely acquainted with the anxieties and problems described by the Spanish, Portuguese, Yugoslav, Greek and Turkish delegations. Noting that the problem of reservations affected these five countries alone, the Italian delegation wondered whether an effort should not be made to take account of their requests in such a way that they too could accede to the Convention. It ought to be possible to find a compromise on the following two points: firstly, the scope of the Article should be extended to include chemical products as well. Secondly, as regards the duration of the period, a solution could be found by laying down periods of different lengths for different products. By way of example, a period longer than 10 years should be laid down for pharmaceutical products. 1017. The Swiss delegation supported the views expressed by the French and Danish delegations. It was particularly anxious to stress the close link between economic development, research and patent protection.

As regards the Italian delegation's suggestion, the Swiss delegation pointed out that, as it stood, Article 166 already represented a compromise. It could not accept that this text should now be regarded as an expression of the attitude of the more developed countries nor as the basis for a search for a further compromise.

In order to demonstrate the exaggeration in the fears of those States which sought an extension of the reservation, the Swiss delegation took an example from the Paris Convention. At the time of the first conference in 1883, it had been proposed that use of a patent in one country of the Union should be deemed equivalent to use of it in all countries of the Union. The Swiss delegation had been unable to accept such an arrangement because it feared that the Swiss economy would not be able to survive competition with German industry. Some years later, however, in 1898, Switzerland had signed an agreement with Germany which provided that use of a patent in one of the two countries was equivalent to use of it in the other country. Accepting competition from German industry had not had any untoward consequences for the development of Swiss industry but rather the contrary. The same considerations should hold today for the countries which sought an extension of reservations. All patent protection in the last resort encouraged research and thus led to economic growth. 1018. The CNIPA delegation drew attention to the problem of the drafting of claims for European patent applications if reservations affecting numerous fields were permitted. When drafting his claims, an applicant would have to take account of their possible invalidity in part or in whole in certain States. This would complicate considerably the work of the European Patent Office, the applicant and the applicant's patent agent.

The CNIPA delegation then expressed its views on Article 166 as such. In view of the fact that that Article was the result of lengthy negotiations, it wished that the present text would be allowed to stand. 1019. The COPRICE delegation restated its proposal, given in M/16, point 13, that the period be shortened from 10 to 5 years. It stressed that in any case COPRICE considered it important that the end of the period laid down in Article 166 should be fixed there definitively. The COPRICE delegation was also opposed to the extension of that Article to cover chemical products. Its reasons were the same as those expressed by the various observer delegations and by certain member delegations.

The COPRICE delegation also wished to stress, as EIRMA and CEIF had done, that the lack of protection for chemical or pharmaceutical products in certain highly industrialised

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discussion and that a happy medium would have to be sought between the fullest possible harmonisation of laws governing patentability and the accession of the greatest possible number of States to the Convention. This middle way had been sought for years and Article 166 of the draft Convention was a compromise which ought to be acceptable. As regards the extension of the period for which reservations could be maintained, the United Kingdom delegation felt that any arrangement involving an indefinite period would not be acceptable since it would exempt a State indefinitely from complying with some requirements of the Convention. Even an extension of 10 years would be difficult to accept since, if a country really intended to align on the European system, the 10 -year period at present provided for should be sufficient. A number of observer delegations had requested in the preparatory documents that this period be reduced to 5 years. This request, however, was too restrictive; it confirmed the balance achieved in the 10 -year solution envisaged at present.

With regard to the scope of Article 166, the United Kingdom delegation pointed out that it had always been difficult for governments, for political and social reasons, to consider the advantages afforded by the patentability of pharmaceutical and food products. These reasons did not apply to chemical products. The United Kingdom delegation also felt that it would not be in a country's interests to exclude as large and important an industrial sector as chemical products as such from protection while the processes for manufacturing such products could be patented. Countries which, for social reasons, wished to protect the public both as regards the price of such products and manufacture of an adequate proportion of them by local undertakings could solve the problem by compulsory licencing.

Finally, the United Kingdom delegation felt that Article 166, as it stood, took sufficient account of the legitimate interests of those countries which were not yet able to fully accept the system established by the Convention. 1009. The EIRMA delegation broadly supported the arguments presented by the United Kingdom delegation. It wished to make a number of practical comments reflecting the viewpoint of research-based industries. Firstly it pointed out that it was not the level of industrialisation of certain countries which, historically speaking, had resulted in only the processes for the manufacture of chemical products and not the products themselves being patentable, but the wishes of the chemical industry itself. The reasons for such limitation no longer existed and it was difficult to argue that patents issued to foreign companies for chemical products could slow down the economic progress of less advanced countries. This was further underlined if account were taken of the ever increasing degree of industrial co-operation within Europe and the possibility of preventing abuses by means of compulsory licencing. The EIRMA delegation also pointed to the distortions of competition which would result from an extension of the scope of Article 166, particularly in view of the discriminatory effect which it would have on research-based industries, or at any rate, those located outside the territory of the Member States of the Communities. As regards the duration of the period for entering reservations, the EIRMA delegation recalled that the Diplomatic Conference held in Lisbon in 1958 under the Paris Union had unanimously adopted an arrangement which favoured the introduction of patentability for chemical products as such. This had resulted in revised legislation to that effect in various European States.

Finally, the EIRMA delegation stated that, while Article 166 should be retained, it should not be extended to chemical products and the period for reservations should be reduced to 5 years. 1010. The IAPIP delegation pointed out that IAPIP had always been in favour of the maximum solution and could not therefore approve the principle of reservations. Nonetheless, it agreed that, for political reasons, some reservations could be accepted, although it felt that those contained in Article 166, paragraph 2, sub-paragraphs (a) and (b), as they now stood should be considered an absolute maximum. The 10 -year period should be reduced since reservations would create disparities in the effects of a European patent from on country to another.

The IAPIP delegation could not agree to the proposal submitted by the Portuguese delegation for gradual area-byarea implementation since it would transform the Convention into a jumble of national laws. 1011. The French delegation recalled that the purpose for which European patents were to be created was the harmonisation of laws leading to a unitary patent having the same effect in all the countries concerned and facilitating the establishment of an economic unit. The problem of Article 166 had been examined at length and its importance had been recognised with the result that the States which had participated in the Luxembourg Inter-Governmental Conference had each made concessions to arrive at a text which would take into account the various stages of economic development of the States parties to the Convention. Research was conducive to the acquisition of new wealth and protection was a strong incentive for research. Consequently, patents were obviously the most effective instrument of economic development and integration. The French delegation did not believe that the absence of patentability in certain sectors in any way aided the economic development of a country.

It did not feel that the various amendments to Article 166 submitted by some member delegations could be taken as a sound basis for discussion. In particular, the absence of a time limit for the duration of reservations or the option whereby States could themselves choose the moment for the withdrawal of reservations ran counter to the very principle of the patent system which the French delegation wished to have established. Finally, the French delegation concurred with the United Kingdom delegation in considering that a happy medium between the various aspirations would have to be found, while bearing in mind the realities of the situation. 1012. The UNEPA delegation endorsed the views of the French delegation. It noted that the governments of some States viewed the granting of patents in some areas, such as pharmaceutical, food and chemical products, as containing disadvantages for their economies. This concern was ill-founded. One of the requirements for industrial development in any particular country was the existence of patent protection in these specific sectors. Until such protection was granted, research-based industries, whose role in economic development was evident, would not be established in that country. This applied to food and pharmaceutical products, but even more so to chemical products. The UNEPA delegation therefore ideally wished Article 166 to be deleted. However, it recognised that, for political reasons, this could not be done; accordingly, it urged the member delegations to extend the duration of the period for reservations beyond 10 years and to have chemical products excluded from the Article in question. 1013. The UNICE delegation recalled that in preparatory document M/19, point 28, it had expressed the wish that the period during which reservations could be made should not exceed 5 years. However, in view of the turn which the discussion had taken, the UNICE delegation fully supported the statements made by the United Kingdom delegation. The UNICE delegation had given a great deal of thought to the advisability of deleting Article 166. It had however come to the conclusion that there were good reasons why certain countries

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period for reservations if the economic circumstances which had prompted the entry of reservations still obtained in the country in question after the period had expired.

The Spanish delegation maintained that reservations should be extended to cover chemical products for the same reasons as those which had lead to reservations being provided for pharmaceutical and food products. It also pointed out that some highly developed countries had only very recently decided that chemical products as such could be patented. With regard to the possible extension of the ten-year time limit, the Spanish delegation considered that it was impossible to forecast future developments in the economic situation at present. It would be essential to have flexible time limits to avoid causing serious disruption in industries in the countries concerned. While the principle contained in the present paragraph 3 of Article 166 that any Contracting State that entered a reservation should withdraw it as soon as circumstances permitted should be maintained, the determination of what economic conditions permitted a reservation to be withdrawn should be left to the State in question. 1003. Recalling that it had submitted a proposal for a new wording of Article 166 in M/72/II, the Portuguese delegation stated that while it was true that the harmonisation of laws in the field of intellectual property and particularly in that of patents, constituted one of the most effective means of progress in international co-operation, it was no less a fact that this was a long-term undertaking which could only be accomplished in stages. The trend was one which had lately become world-wide but which progressed most effectively in the context of regional initiatives such as the European patent. However, if the progress which such achievements promised was actually to be accomplished, these initiatives, even on a regional scale, would have to be sufficiently flexible to enable all countries belonging to the regional group to participate even if their particular economic circumstances did not allow them to become fully integrated from the outset. At present, if Portugal were to participate in the European patent it would be giving all and receiving nothing in return. Accordingly, inclusion of the principle of progressive integration in the Convention would be the most appropriate solution for Portugal and other States in a similar situation which nonetheless wished to join the European Patent Organisation. 1004. The Yugoslav delegation supported the arguments put forward by the Spanish and Portuguese delegations and, as it had pointed out in M/77/II, it endorsed the principle underlying the Spanish Government's proposal submitted in M/29. Although the Yugoslav delegation would have preferred the Convention to be based on the minimum solution, it recognised that it was politically impossible to obtain a majority of the delegations in favour of that solution and therefore the arrangement proposed by the Spanish delegation was as far as the Yugoslav delegation was willing to go to accede to the Convention.

The Yugoslav delegation recalled that, in the highly developed countries, the chemical, pharmaceutical and foodstuff industries had existed and been expanding for over a century. In Europe at least, it had only been possible to grant patents in respect of processes: far from limiting industrial growth, this had considerably assisted it. With regard to the duration of the period for which reservations could be entered, the Yugoslav delegation considered it impossible to state at this stage whether, even in 20 or 25 years hence, industry in certain countries would be in a position to adopt and benefit from the protection for products provided under the Convention. Development would certainly not come to a standstill in the highly industrialised countries where the sectors of industry in question would advance at a much faster pace than their counterparts in other countries such as Yugoslavia even under the most optimistic projections of industrial development. The Yugoslav delegation appreciated that those countries which had a particularly high level of industrial development should also wish to introduce protection for chemical, pharmaceutical and food products as such. They had reached a sufficiently high level of economic, historical and social development to do so. However, other countries such as Yugoslavia could not accept a system of protection which was too inflexible and, by the same token, unsuited to their level of industrial development. The problem was not just economic, it was also political, for the most powerful instrument of international politics at the present day was the ability to create new sources of wealth. Consequently, countries which had fallen behind for known historical reasons should not be put in a position of weakness from the outset. 1005. The Turkish delegation shared the concern expressed by the preceding delegations and supported the Spanish delegation's proposal in principle. 1006. The Greek delegation pointed out that its position on Article 166 had already been outlined during the general discussion in the plenary (see M/PR/K1, point 43). It had expressed its concern on this matter ever since the Luxembourg Inter-Governmental Conference had opted for the maximum solution. However, it had never been its wish to oppose the majority. It simply wanted reservation clauses to be included enabling States, whose economy was not yet ready for such integration, to contribute to the construction of the system. To this end, the reservation clauses would have to be sufficiently flexible and take into account the political aspect of the problem with regard to those States which had shown understanding for the more progressive solution agreed by the majority. In view of these political considerations, the Greek delegation hoped that the reservation clauses would be drafted along the lines suggested by the Spanish delegation. 1007. The delegation of the Chambers of Commerce and Industry considered that Article 166 represented a failure to understand the function of a patent system in a modern economy. Article 166 was mainly intended to take into account the position of certain European States which were less developed than the rest of Europe. It did not deny that the situation of these States called for special consideration. However, it was a moot point whether Article 166 was really in the interests of those States. None of the States which intended to take advantage of Article 166 had a good patent system. Because they had so far been unable to improve their system, these States wished to bar patentability in the most sensitive areas of their national economies and social structures. In actual fact, a good patent system would promote development in these sensitive areas. The Convention offered these States a good patent system but if Article 166 were invoked, the system would not apply to those areas where it would be most needed. It had been argued that the less developed countries feared the influence of industries in the highly industrialised countries and considered that they could organise and develop their creative potential before the establishment of an industrial base. This notion was unfounded since a good patent system first promoted industrial development and it was only at a later stage that creative potential could be developed. The delegation of the Chambers of Commerce and Industry recognised that it would not succeed in inducing the member delegations to change their position on an issue which had assumed political overtones but it urged that the scope of Article 166 be limited as far as possible in the very interests of those countries which wished to invoke it. 1008. The United Kingdom delegation maintained that it was impossible to find an ideal solution to the problem under

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under agreements concluded with inter-governmental organisations. It also considered that an agreement with INPADOC would come under private law. 170. The Austrian delegation stated that its proposal would not result in the exclusion of other information centres. 171. The United Kingdom delegation felt that the present text of Article 10 together with Article 31 (30), paragraph 3, clearly defined the respective powers of the President and the Administrative Council to conclude agreements. If the proposal were accepted, the interpretation given to the scope of Article 10 would no longer be valid. 172. The Committee voted on the Austrian proposal in M/78/I/II which was accepted and referred to the Drafting Committee. 173. The United Kingdom delegation pointed out that in Article 28 (30) there was an explicit reference to an intergovernmental organisation; Article 31 (33), paragraph 3, should therefore be amended to include such a reference as well. The Article under examination dealt with agreements to be concluded by the President on behalf of the Organisation with international organisations. Obviously this was limited to fairly important agreements and excluded agreements with non-governmental organisations. The President of the Office would be competent to conclude such agreements under Article 10. 174. The German, French and Netherlands delegations shared the view expressed by the United Kingdom delegation. 175. The Committee accepted the United Kingdom proparat on Article 31 (33) and referred it to the Drafting Committee.

Article 33 (35) - Voting rules

176. The Committee referred this Article to the Drafting Committee and asked it to examine also the German delegation's proposals in M/11, point 4 and M/47, point 11.

Article 143 - Special departments of the European Patent Office

177. The Committee referred the proposal from the Member States of the European Communities in M/14 to the Drafting Committee for examination.

Paragraph 1

178. The United Kingdom delegation feared that this proposal might be interpreted in conjunction with Article 30 (32) as meaning that the select committee would be considered as a body set up by the Administrative Council of the European Patent Organisation and proposed that this paragraph be supplemented by the words: "At the request of the group of Contracting States". 179. The Committee understood the concern expressed by the United Kingdom delegation and referred the provision in question to the Drafting Committee so that an unambiguous wording could be found.

Paragraph 2

180. The Committee did not adopt a proposal from UNEPA (M/62/I/II, point 8) that the words "for example" be inserted before the words "national courts".

Paragraph 2 (i (b))

181. The Yugoslav delegation proposed in M/77/II that the words "at the invitation of the Administrative Council" be deleted to enable States which did not take part in the preparatory work to accede freely to the Convention. 182. The Swiss delegation considered that the text of the basic draft provided for all the desired options and should not therefore be amended. 183. The Yugoslav delegation then withdrew its proposal. 184. The Committee referred Article 165 to the Drafting Committee and asked it to consider the drafting proposal submitted by the United Kingdom delegation in M/40, point 25.

Article 167 (168) - Territorial field of application

185. The Committee recorded its agreement on a proposal from the United Kingdom delegation in M/40, point 26, to the effect that the words "unless the State concerned has earlier ceased to be a party to the Convention, pursuant to Article 171, paragraph 4" be deleted.

Article 173(174) - Denunciation

186. The Committee recorded its agreement on a proposal by the German delegation that the last part of the second sentence be deleted in line with the amendment to Article 167, paragraph 3.

Paragraph 2

187. The Committee established that this provision did not in any way detract from the right of States to prepare and publish translations of the Convention in their official languages. However, only translations approved by the Administrative Council could be considered official texts within the meaning of this Article.

I. Positions of the Delegations

1001. The Committee began by holding a general exchange of views on the problems raised by the provisions relating to reservations. 1002. The Spanish delegation pointed out that it had submitted a proposal for an amendment to Article 166 which was set out in M/29. The Spanish proposal was based on a position which had already been stated during the discussions of the Luxembourg Inter-Governmental Conference. The reason for the proposal was that some countries would be unable to agree immediately to the incorporation of certain rules of the Convention in their legal systems without seriously weakening the present structure of some sectors of industry whose economic development was not yet sufficiently advanced. It was for this reason that, when the Luxembourg Inter-Governmental Conference opted for the maximum solution, provision had had to be made for the entry of reservations in certain cases and Article 166 of the draft Convention had been drafted. However, from the outset, the Spanish delegation had maintained that the scope for reservations provided was inadequate. The Spanish Government felt that the provision should chiefly be extended in two respects: chemical products should be included and provision should be made for the possibility of extending the ten-year

General

1. Main Committee II, set up by the Plenary of the Conference, was chaired by Mr. F. Savignon, Director of the National Industrial Property Office (France). Mr. E. Tuxen, Director of the Danish Patent Office, was the first Vice-Chairman;

Count A. F. von Gerliczy-Burian (Liechtenstein), Head of the Department for International Relations, and Dr. Luis Alberto de Vasconcelos Gois Fernandes Figueira (Portugal), Assistant Director-General for Economic Affairs, were the other Vice-Chairmen. Mr. Bowen (United Kingdom) wos appanted rapporteur. 2. The duties of Main Committee II were based upon Rule 12 of the Rules of Procedure (M/34) and on a recommendation adopted by the Steering Committee of the Conference (M/56/I/II/III).

On this basis Main Committee II was responsible for Chapters I to IV of Part I, with the exception of Articles 14, 143 and 145, Part XI, with the exception of Articles 160 to 162, Part XII of the Convention, with the exception of Articles 169, 174 and 175, the corresponding provisions under the Implementing Regulations to the Convention, the Protocol on the Centralisation of the European Patent System and on its Introduction, the Protocol on the Privileges and Immunities of the European Patent Organisation, the Conference Recommendations and Resolutions on these matters, the Recommendation on documentation for patent search and the Recommendation regarding the status and remuneration of the employees referred to in Article 159, paragraph 2, of the Convention. 3. Main Committee II met on 13 and 14 September, from 17 to 22 September and on 25 September 1973. At its first meeting the Main Committee set up a Drafting Committee consisting of the Austrian, French, Irish and Swiss delegations and chaired by Mr. Jenö Staehelin, member of the Swiss delegation. Mr. R. Bowen (United Kingdom), Rapporteur of Main Committee II, also attended. 4. At the opening of the first meeting, the Chairman noted that the Steering Committee had approved two requests at its meeting on 10 September 1973, namely that Mr. Sheehan of the US Patent Office and Mr. van Empel be admitted as listeners to the meetings of the Main Committees. At a subsequent meeting Main Committee II also authorised Mr. Otani of the Japanese Patent Office to attend Committee meetings as a listener.

Main Committee II agreed that the aforementioned gentlemen could take part in its proceedings as listeners pursuant to Rule 48, paragraph 1, of the Rules of Procedure. 5. The Chairman pointed out that under Rule 32 of the Rules of Procedure only proposals made in writing by the Government delegations could be discussed and voted upon. In principle, written proposals had to be submitted by 17.00 on the day prior to the discussion. 6. The numbering of Articles, Rules and paragraphs in these minutes follows the text of the draft proposals ( M / 1 to M / 6 ). The numbering in the text signed in Munich is given in brackets after the number of the provision under consideration.

Title

7. The delegations of the Member States of the European Communities submitted their proposal in M/14, point 1, for the use of an abbreviated title after the title of the Convention. 8. The Committee signified its agreement to the proposal.

Article 4 - European Patent Organisation

9. The United Kingdom delegation proposed that Article 4 be recast along the lines of its suggestion in M/40, point 3. 10. The Austrian, German and Swiss delegations endorsed the proposal subject to the deletion of the word "principal" in paragraph 2 of the draft on the grounds that the list of organs of the Organisation given there was exhaustive. 11. The United Kingdom delegation agreed to amend its proposal accordingly. 12. The Committee adopted the United Kingdom proposal as amended.

(a) Paragraph 1

13. The Luxembourg delegation submitted the proposal contained in M/9, point 1. 14. The French, German and United Kingdom delegations voiced objections to the proposal. The incorporation of a provision to the effect that the legal personality of the Organisation would be recognised automatically in each of the Contracting States could give rise to difficulties of interpretation, whereas there was a solidly established tradition whereby the conferral of legal personality by a convention on an international organisation followed automatically under a given legal system from the act of ratification and the entry into force of the convention in the State concerned. 15. The Committee noted that a vote could not be taken on the Luxembourg delegation's proposal as it had failed to gain support from any of the delegations.

(b) Paragraph 2

16. The Committee did not adopt a proposal by the Luxembourg delegation set out in M/9, point 2. 17. The Committee then turned to the United Kingdom delegation's proposed amendment in M/40, point 4, whereby paragraphs 2 and 3 were to be aligned on Article 211 of the Treaty of Rome, which had been taken as a basis for Article 5 of the Draft Convention. This would also involve combining paragraphs 2 and 3 of the draft in a single provision. 18. As the Italian, Netherlands and Swiss delegations were dubious as to the wisdom of combining paragraphs 2 and 3, the United Kingdom delegation withdrew this particular drafting item of its proposal. 19. The Committee agreed to adapt paragraph 2 in line with the first sentence of the United Kingdom delegation's proposal.

(c) Paragraph 3

20. Following the referral to the Drafting Committee of a proposal submitted by the Luxembourg delegation in M/9, point 3, the Committee addressed itself to the proposal by the United Kingdom delegation as set out in M/40, point 4. 21. The United Kingdom delegation pointed out that the text of the Draft Convention was too limited and failed, for instance, to make provision for the representation of the Organisation by the President at meetings of international bodies. It therefore proposed that a more comprehensive form of words be used to the effect that the President of the Office represented the Organisation.

MINUTES
OF THE
MUNICH DIPLOMATIC CONFERENCE
FOR THE SETTING
UP OF A EUROPEAN SYSTEM
FOR THE GRANT OF PATENTS

(Munich, 10 September to 5 October, 1973)

Page 22

Article 145 Only concerns German text

Article 153 (2) ...., the Examining Divisions shall be competent to take decisions ...

Article 164 (1) The Implementing Regulations, the Protocol on Recognition, the Protocol on Privileges and Immunities, the Protocol on Centralisation and the Protocol on the Interpretation of Article 69 shall be integral parts of this Convention.

Article 166 Only concerns German text

Article 167 (2) ... (a) ...; this reservation shall not affect protection conferred by the patent in so far as it involves a process of manufacture or use of a chemical product or a process of manufacture of a pharmaceutical or food product;

Article 175 Only concerns German text

Article 176 Only concerns German text

Page 23

MUNICH DIPLOMATIC CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 4 October 1973 M/160/K Original: English/French/German

CONFERENCE DOCUMENT

Drawn up by: General Drafting Committee

Subject: Amendments to the texts of document, M/146/R. 1 to 15

Paragraph 2(a):

(a) ... ; this reservation shall not affect protection conferred by the patent in so far as it involves either a process of manufacture or use of chemical products, or a process of manufacture of pharmaceutical or food products;

Page 25

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 2 October 1973

M/154/G

Original: French

CONFERENCE DOCUMENT

-Drawn up by: Greek delegation

Subject: Article 167, new drafting proposal

Page 26

Delete the words "or use" in the penultimate line of paragraph 2(a).

Page 27

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 1 October 1973

M/149/G

Original:

CONFERENCE DOCUMENT

Drawn up by: Greek delegation

Subject: Proposed amendment to Article 167 as worded by the General Drafting Committee - M/146/R 7

Page 28

4) Any Contracting State that has made a reservation shall withdraw this reservation as soon as circumstances permit. Such withdrawal shall be made by notification addressed to the Government of the Federal Republic of Germany and shall take effect one month from the date of receipt of such notification. (5) Any reservation made in accordance with paragraph 2(a), (b) or (c) shall apply to European patents granted on European patent applications filed during the period in which the reservation has effect. The effect of the reservation shall continue for the term of the patent.

Hewth to paragraphs 4 and 5, any reservation shall cease to have effect on expiry of the period referred to in paragraph 3, first sentence, or, if the period is extended, on expiry of the extended period.

Page 29

(1) Each Contracting State may, at the time of signature or when depositing its instrument of ratifica. tion or accession, make only the reservations specified in paragraph 2 . (2) Each Contracting State may reserve the right to provide that: (a) European patents, in so far as they confer protection on chemical, pharmaceutical or food products, as such, shall, in accordance with the provisions applicable to national patents, be (1)neffective or revocable; this reservation shall not affect protection conferred by the patent in so far as it involves a process of manufacture or use of the product; (b) European patents, in so far as they confer protection on agricultural or horticultural processes other than those to which Article 53, sub-paragraph (b), applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (c) European patents shall have a term shorter than twenty years, in accordance with the provisions applicable to national patents; (d) it shall not be bound by the Protocol on the Recognition, of Decisions-in-respect-of-the-Rigint-to-the Grant of a European Patent. (3) Any reservation made by a Contracting State shall have effect for a period of not more than ten years from the entry into force of this Convention. However, where a Contracting State has made any of the reservations referred to in paragraph 2(a) and (b), the Administrative Council may, in respect of such State, extend the period by not more than five years for all or part of any reservation made, if that State submits, at the latest one year before the end of the ten-year period, a reasoned request which satisfies the Administrative Council that the State is not in a position to dispense with that reservation by the expiry of the ten-year period.

Page 30

EPR 1125/72

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 30 September 1973

M/ 146/R 7

Original: English/French/German

CONFERENCE DOCUMENT

Drawn up by: General Drafting Committee

Subject: Convention: Articles 167 to 178

Page 31

(5) Any reservation made in accordance with paragraph 2 (a) or 2 (b) shall apply to European patents granted on European patent applications filed during the period in which the reservation has effect. The effect of the reservation shall continue for the term of the patent.

(6) Subject to paragraphs 4 and 5 any reservation shall cease to have effect on expiry of the period referred to in paragraph 3. First sentence or, if the period is extended, on expiry of the extended period.

Page 32

Article 166

Reservations

(1) Unchanged from 1972 published text

(2) Each Contracting State may reserve the right to provide that:

(a) European patents in so far as they confer protection on chemical, pharmaceutical or food products, as such, irrespective of their process of manufacture, or on agricultural or horticultural processes other than those to which Article 51, subparagraph (b) applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable;

(b) Unchanged from 1972 published text

(c) The reservation made by a Contracting State shall have effect for a period of not more than ten years from the entry into force of this Convention. However, the Administrative Council may respect or agree or all of the reservations referred to in paragraph 2 (a), extend the period by not more than five years if the State which has made any such reservation submits, at the latest one year before the end of the ten year period, a reasoned request which satisfies the Administrative Council that the State is not in a position to dispense with that reservation by the expiry of the ten year period.

(4) Former paragraph 3; unchanged from 1972 published text

Page 33

MUNICH DIPLOMATIC CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 24 September 1973

M/130/II/R 6 Original English/French/German

TEXTS DRAWN UP BY THE DRAFTING COMMITTEE OF MAIN COMMITTEE II AT THE SETTING ON 24 SEPTEMBER 1973

Articles of the Convention: Articles 1 4 6 7 9 15 16 16a 18a 19 21 22 28 31 33 166 176

Implementing Regulations: Rules 9 12

Protocol on Privileges and Immunities of the European Patent Organisation

Protocol on the Centralisation of the European Patent System and on its Introduction

Page 34

Article 166 Reservations (1) - thichangel from 1972 mublished text - (2) Each Contracting State may reserve, for a period of ten years from the entry into force of this Convention, the right to provide that: (a) European patents in respect of chemical products and food, drink and tobacco products, as such, and agricultural ... (remainder unchanged from 1972 published text). (b) (c) } - r ohengnd from 1972 published text - (3) A reservation made in accordance with paragraph 3 sub-paragraphs (a) and (b) shall apply to all European patents which heve been granted on the basis of patent applications filed during that period and shall remain effective for the whole term of suca patents. (4) If a process for the manufacture of a new product is the subject of a European patent, to which a reservation made by a Contrecting State in accordance with paragraph 3 still applies, every product of the same nature shall, in the said Contracting State, be considered as being manufactured according to the process covered by the patent, unless proof of the contrary is furnished. (5) - former paragraph 3 - (6) - former paragraph 4 -

Page 35

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 20 September 1973

M/116/II

Original: German

CONFERENCE DOCUMENT

Drawn up by: The delegation of the Federal Republic of Germany

Subject: Article 166 of the Convention

Page 36

(c) upon expiry of this period the rights conferred by a granted European patent shall be exercised in conformity with the Convention.

However, any third parties who have in the State or States in question during this period really and effectively used the invention which is the subject of the application, shall be entitled to continue using the invention, subject only to payment of an equitable licence fee to the proprietor of the granted patent, as from the cessation of the reservations.

Page 37

Article 166, paragraph 4

As the Netherlands delegation pointed out in M/93/II of 17 September 1973, the question arises as to what happens to a European patent granted for a product in respect of which certain Contracting States have made reservations as provided for in Article 166, paragraph 2(a) when the reservation period expires, where the proprietor of such a patent has, under the conditions referred to in Article 77, designated one or more States which have made such reservations.

In the opinion of CEIF this situation should be clarified as follows:

In the event of

(1) a Contracting State availing itself of the right to make reservations in respect of one or more products referred to in Article 166, paragraph 2(a)

(2) and a European patent having been granted for such a product in Contracting States which have not availed themselves of these reservations, on the basis of a European patent application designating a Contracting State which has made reservations,

Provision

(a) any reservation shall cease to have effect on expiry of the period laid down in paragraph 2;

(b) the rights conferred by a granted European patent shall take effect, under the general conditions laid down in Article 62, in the designated State or States which have made reservations.

However, the exercise of these rights in the said State or States shall be suspended throughout the period in which they apply reservations.

Page 38

MUNICH DIPLOMATIC CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 18 September 1973 M/106/II Original: French

CONFERENCE DOCUMENT

Drawn up by: CEIF, EIRMA, UNICE

Subject: Clarification of Article 166, paragraph 4

Page 39

Article 166 of the Convention (Reservations) In M/77/II dated 13 September 1973, the Yugoslav delegation supported the Spanish proposal, contained in M/29, relating to Article 166, since it considered this proposal acceptable to all the countries represented here.

However, in view of the opposition expressed by certain delegations at the meeting of 14 September, and with the aim of finding a compromise solution which would enable the Convention to be ratified by a greater number of European countries, the Yugoslav delegation wishes to specify its point of view by proposing the following text for Article 166, paragraph 2: (2) Each Contracting State may reserve, for a period of fifteen years from the entry into force of this Convention, the right to provide that: (a) European patents in respect of chemical, food and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 51, subparagraph (b), applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (b) Unchanged (c) Unchanged

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 18 September 1973 M/102/II Original: French

CONFERENCE DOCUMENT

Drawn up by: Yugoslav delegation Subject: Article 166 of the Convention (Reservations)

Proposed amendment of

Article 166 (Reservations) submitted by the Greek and Turkish delegations

- The end of paragraph 1 should read: "... in paragraphs 2 and 3." - Amend the second line of paragraph to read "fifteen years" instead of "ten years", the rest of the paragraph remaining unamended. - A new paragraph 3 should be added worded as follows: "(3) Each Contracting State may reserve, for a period of ten years from the entry into force of this Convention, the right to provide that European patents in respect of chemical products, as such, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable." - The paragraph numbering should be changed so that paragraph 3 becomes paragraph 4 and the first sentence of the former paragraph 3 should read: "(4) Any Contracting State that has made reservations shall withdraw them as soon as circumstances permit."

The rest of the paragraph remains unchanged.

- Paragraph 4 should become paragraph 5 and read as follows: "(5) Any reservation shall cease to have effect on expiry of the period laid down in paragraphs 2, 3 and 4, except in respect of European patents granted and patent applications filed within the period during which the reservations had effect."

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 18 September 1973 M/99/II Original: French

Subject: Proposed amendment of Article 166 (Reservations)

Page 43

The Netherlands delegation thinks that Article 166, paragraph 4, laying down that any reservation shall cease to have effect on expiry of a period of 10 years, is insufficiently clear.

In particular the question arises as to what happens to a patent granted for a pharmaceutical product two years before the expiry of the ten year period when the period expires. Does such a patent nevertheless become valid in a designated State which has made a reservation and is the maximum period extended to twenty years?

We do not believe this to be the case. In order to remove any uncertainty on this point the Netherlands delegation proposes that paragraph 4 be clarified by adding at the end:

Except as regards patents granted in respect of patent applications filed before the expiry of that period.

Page 44

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 17 September 1973

M/93/II

Original: French

CONFERENCE DOCUMENT

Drawn up by: Netherlands delegation

Subject : Clarification of Article 166, paragraph 4

Page 45

Article 166, paragraph 2(a), provides that if a buromen natent relates to food or pharmaceutical products as such, it shall in certain circumstances be ineffective or revocable. A patent may contain independent claims to a process for makinc foods or pharmaceutical products as well as claimn for the products when so made and products ner se (see Rule 30 (c)). It anpears that Article 166, paragraph 2(a), is intended to men that claims to products as such shall be ineffective and not the entire patent. Accordingly we suggest a drafting amendnent which involves putting the words "Claims in ..." at the beginning of Article 166, paragraph 2(a).

Page 46

EPR 1024/73

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 14 September 1973

M/ 83/II

Original: English/French

CONFERENCE DOCUMENT

Drawn up by: UNEPA

Subject: Clarification of Article 166, paragraph 2(a) of the Convention

Page 47

At the general debate the Yugoslav delegation expressed the profound concern of its Government with respect to two principles contained in the Draft Convention to be adopted at the Munich Conference. These are:

- firstly that of the accession of further States being subject to "the invitation of the Administrative Council", contained in Article 165 and which means that accession will not be free. - secondly the provisions of Article 166 which restrict the liberty to make reservations with respect to protection for certain products. (1) For reasons which the Yugoslav delegation has already set forth, it proposes that in Article 165 the words "... at the invitation of the Administrative Council" be deleted. (2) As regards Article 166, which restricts the reservations which may be made, the Yugoslav delegation supports in principle the substance of the proposal of the Spanish delegation (M/29), whilst reserving the right to make its own amendments to the text.

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 13 September 1973 M/77/II Original: French

CONFERENCE DOCUMENT

Drawn up by: Yugoslav delegation Subject: Articles 165 and 166

Page 49

(4) Any Contracting State that has made a reservation shall withdraw this reservation as soon as circumstances permit. Such withdrawal shall be made by notification addressed to the Government of the Federal Republic of Germany and shall take effect one month from the date of receipt of such notification.

TO ARTICLE 166 OF THE DRAFT CONVENTION

Article 166

Reservations

(1) Each Contracting State may, at the time of signature or when depositing its instrument of ratification or accession, make only the reservations specified in paragraphs 2 and 3. (2) Each Contracting State may reserve the right to provide that: (a) European patents in respect of food, chemical and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 51, sub-paragraph (b), applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (b) European patents shall have a term shorter than twenty years. in accordance with the provisions applicable to national patents; (c) it shall not be bound by the Protocol on the Recognition of Decisions in respect of the Right to the Grant of a European Patent. (3) Without prejudice to the provisions of paragraph 2, each Contracting State may, at the time of ratification or accession, designate the areas of technology in respect of which it is in a position to agree immediately to the application of this Convention. The Contracting States shall inform the Government of the Federal Republic of Germany by a simple notification of subsequent agreement to the application of the Convention to sectors not specified at the time of ratification or accession.

Page 51

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- 1973 -

Munich, 12 September 1973

M/72/II

Original: French

CONFERENCE DOCUMENT

Drawn up by: Portuguese delegation

Subject: Proposed amendment to Article 166 of the Draft Convention

Page 52

Die spanische Regierung wünscht folgende Änderungen am Entwurf eines Übereinkommens über ein europäisches Patentertellungsverfahren:

1 Aufnahme der chemischen Erzeugnisse in Artikel 166 Absatz 2 Buchstabe a.

2 Aufnahme eines Satzes in Artikel 166 Absatz 4, nach dem es möglich ist, die Frist von zehn Jahren für die zu Absatz 2 Buchstabe a geäußerten Vorbehalte ausnahmsweise zu verlängern, falls nach Ablauf dieser Frist die wirtschaftlichen Gegebenheiten, die zu den Vorbehalten des betreffenden Landes geführt haben, fortbestehen.

The Spanish Government would like the following amendments to the Draft Convention establishing a European System for the Grant of Patents to be adopted:

1 Insertion of chemical products in Article 166, paragraph 2(a);

2 Insertion in Article 166, paragraph 4, of a sentence providing for the possible extension, as an exceptional measure, of the ten-year period for the reservations recorded in paragraph 2(a), should the economic circumstances which caused the country concerned to make these reservations still obtain at the end of that period.

Page 53

Original: Französisch French Français

STELLUNGNAHME

DER SPANISCHEN REGIERUNG

COMMENTS BY THE SPANISH GOVERNMENT

PRISE DE POSITION DU GOUVERNEMENT ESPAGNOL

Page 54

1 Die AIPPI begrüßt die Einberufung der Münchner Diplomatischen Konferenz für den Herbst 1973 als den erfolgreichen Abschluß langjähriger Bemühungen um die Errichtung eines europäischen Patentsystems. Sie weiß die an sie ergangene Einladung zur Teilnahme an dieser Konferenz zu schätzen. Die AIPPI stellt mit Befriedigung fest, daß in den der Konferenz unterbreiteten Texten einer großen Zahl der von ihr geäußerten Wünsche entsprochen worden ist. Sie gestattet sich jedoch, an einige ihrer Wünsche zu erinnern, denen nicht in der von ihr erhofften Weise stattgegeben wurde, obwohl ihnen ihres Erachtens große Bedeutung beizumessen ist.

2 Ihrer Ansicht nach sollten nichtveröffentlichte Unterlagen nicht zum Stand der Technik gehören und nur dann neuheitsschädlich sein, wenn sie nicht von ein und demselben Anmelder stammen. Da diese Bedingung nicht angenommen worden ist, rechnet die AIPPI darauf, daß die Beurteilung der alleinigen Neuheit gegenüber früheren Anmeldungen nicht im Wege der Auslegung ausgedehnt und daß der Schluß von Artikel 54 sehr streng angewendet wird.

3 AIPPI hätte gewünscht, daß ein supranationales Rechtsprechungsorgan eingesetzt wird; jedenfalls müßten ihres Erachtens, falls die Beschwerdekammer die Große Beschwerdekammer befaßt hat, die Parteien, die keine Beschwerde eingelegt haben, am Verfahren vor der Großen Beschwerdekammer beteiligt werden (Artikel 111 Absatz 1 Buchstabe a).

4 Die AIPPI ist nach wie vor der Ansicht, daß die Aufnahme eines Prüfers, dem die Sache bereits bekannt ist (Artikel 18 Absatz 2), in die Prüfungsabteilung allgemein anerkannten Grundsätzen widerspricht.

5 Schließlich erkennt die AIPPI zwar an, daß die in Artikel 166 vorgesehenen Vorbehalte zweckmäßig sind, um den Beitritt einer möglichst großen Zahl von Staaten zu bewirken, vertritt jedoch die Auffassung, daß ein Interesse daran besteht, die Dauer der zur Zeit auf 10 Jahre festgesetzten Übergangszeit zu verkürzen.

6 Die AIPPI behält sich schließlich die Möglichkeit vor, durch ihre Delegierten auf der Diplomatischen Konferenz weitere Bemerkungen nicht so grundlegender Natur vorzutragen.

1 With the convening of the Munich Diplomatic Conference in Autumn 1973, IAPIP welcomes the conclusion of several years' work for the setting up of a European patent system. It would express its gratitude for the invitation extended to it to attend the Conference. It notes with satisfaction that a large number of the suggestions which it has put forward have been taken up in the texts submitted to the Conference. It would however recall certain suggestions which have not been followed up as it had hoped, in spite of the importance which it attaches to them.

2 In its opinion, unpublished documents should not be comprised in the state of the art and should not be invoked against the current application except where they originate from different applicants. Since this condition has not been adopted IAPIP considers that the assessment of novelty alone in relation to prior applications will not be extended by way of interpretation and the result will be a strict application of the last part of Article 54.

3 IAPIP expressed the wish for a supra-national court to be set up, and now considers that in the absence of a right to appeal by the parties concerned, the latter should be able to take part in proceedings before the Enlarged Board of Appeal where a question has been referred to it by a Board of Appeal (Article 111, paragraph 1, sub-paragraph (a)). 4 It continues to feel that the inclusion in the Opposition Divisions of an examiner who is already familiar with the case (Article 18, paragraph 2) is contrary to generally accepted principles.

5 Finally, whilst recognising the desirability of the reservations laid down in Article 166 in order to enable as many States as possible to accede to the Convention, it considers that the length of the transitional period, at present fixed at 10 years, should be reduced.

6 IAPIP reserves the right to submit other comments of a less fundamental nature at the Diplomatic Conference through its delegates.

AIPPI

Association Internationale pour la Protection de la Propriété Industrielle

IAPIP

International Association for the Protection of Industrial Property

L'AIPPI

Association internationale pour la protection de la propriété industrielle

Page 56

Ausnahme unter der Bedingung in Aussicht genommen werden, daß die Staaten, die davon Gebrauch machen, diese Ubergangszeit dazu nutzen, alle geeigneten wirtschaftlichen und rechtlichen Maßnahmen zu ergreifen, um sich nach diesem Zeitraum den Staaten anschlieBen zu können, die von Anfang an das gemeinsame Recht akzeptieren.

Nach den derzeitigen Vorausschätzungen der Sachverständigen in bezug auf das Inkrafttreten des europäischen Patentübereinkommens hätte die gegenwärtig vorgesehene Frist von 10 Jahren zur Folge, daß bis mindestens 1986 in Westeuropa unterschiedliche Regelungen für den Bereich der Patentierbarkeit gelten würden. Eine solche Frist erscheint als viel zu lang, zumal dieselben europäischen Staaten, die für ihre Verlängerung eintreten, den Wunsch geäußert haben, in den nächsten Jahren mit dem Gemeinsamen Markt eine Assoziation einzugehen oder ihm sogar beizutreten.

Diese Staaten sollten darauf hingewiesen werden, daß es widersprüchlich wäre, sich mit dem Gemeinsamen Markt zu assoziieren oder ihm beitreten zu wollen, und sich gleichzeitig zu weigern, innerhalb dieses Zeitraums die Patentierbarkeit in dem Umfang, wie sie innerhalb der Europäischen Wirtschaftsgemeinschaft gilt, anzuerkennen.

Es wird daher beantragt, daß entweder Vorbehalte nur innerhalb von 5 Jahren, gerechnet vom Inkrafttreten des Übereinkommens an, eingelegt werden dürfen, oder daß alle Vorbehalte zur Patentierbarkeit und zur Laufzeit der Patente spätestens am 31. Dezember 1980 auslaufen müssen; da es sich um ein wirtschaftliches Problem ohne unmittelbaren Zusammenhang mit dem Zeitpunkt des Inkrafttretens des Übereinkommens handelt, verdient die letztgenannte Lösung den Vorzug.

Regel 30 - Patentansprüche verschiedener Kategorien

11 CIFE begrüßt es, wenn diese Regel ausdrücklich bestimmt, daß in einer europäischen Patentanmeldung neben dem Verfahren zur Herstellung des Erzeugnisses, auf das sich der Hauptpatentanspruch bezieht, die Mittel zur Ausführung des Verfahrens oder umgekehrt - enthalten sein können; CIFE hält aber das Erfordernis, wonach es sich um ein zur Herstellung des Erzeugnisses ,,besonders angepaBtes" Verfahren oder um eine zur Ausführung des Verfahrens ,,besonders entwickelte" Vorrichtung handeln muß, nicht für gerechtfertigt und beantragt, die Worte ,,besonders angepaßtes" und ,,besonders entwickelt" zu streichen. period to join the States which from the start accept the common principle.

According to the present forecast of experts concerning the entry into force of the European patent, the period of ten years now planned would have as a consequence that patentability remains heterogeneous in Western Europe until 1986 at the earliest. This seems excessively long, if one considers that the same European States that would like to have the period extended have expressed their desire to associate with or even to become members of the Common Market in the next few years.

It is suggested to draw their attention to the contradiction between plans to associate with or to join the Common Market on the one hand, and the refusal to accept at the same time the same field of patentability as within the European Economic Community, on the other hand.

It is therefore requested that the period for which reservations may be made may not extend for more than 5 years from the entry into force of the Convention. Alternatively, since the matter is an economic problem that does not bear a direct relation to the date of entry into force of the Convention, preference would go to a solution where any reservations as to patentability and the life of the patent expire on 31 December 1980 at the latest.

Rule 30 - Claims in different categories

11 CEIF welcomes that this Rule explicitly provides that the same European patent application may include the manufacturing process of the product that is the object of the principal claim as well as the means for carrying out the process or vice-versa. CEIF however thinks that there is no justification for the requirement that the process has to be "specially adapted" for the manufacture of the product, or that the apparatus of means has to be "specifically designed" for carrying out the process, and consequently CEIF asked for the deletion of the words "specially adapted" and "specifically designed".

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wiesen oder zurückgenommen worden sein oder als zurückgenommen gelten, oder das europäische Patent muß widerrufen worden sein.

Der CIFE macht darauf aufmerksam, daß es in drei der vier genannten Fälle (Zurückweisung, ausdrückliche Zurücknahme, Widerruf) wohl kaum empfehlenswert ist, ein solches Umwandlungsrecht vorzusehen, das nur zu einer unnötigen und unzweckmäßigen Überlastung der nationalen Patentämter mit Prüfungsverfahren und in den Staaten, in denen die Patentanmeldungen nicht geprüft werden, zu einer offenbar ungerechtfertigten Einengung öffent-lich-rechtlicher Bestimmungen führen könnte. Es ist nämlich kaum denkbar, daß ein europäischer Staat das europäische Patentübereinkommen ratifiziert, ohne - falls dies noch nicht geschehen ist - in sein innerstaatliches Recht die gleichen Erfordernisse für die Patentierbarkeit aufzunehmen, wie sie in Artikel 50 Absatz 1 vorgeschrieben sind und wie sie sich aus dem Straßburger Übereinkommen von 1963 ergeben.

Hingegen müssen die als zurückgenommen geltenden europäischen Patentanmeldungen, soweit sie nicht unter Artikel 135 Absatz 1 Buchstabe a fallen, anders behandelt werden, da der Anmelder möglicherweise nur irrtümlich oder versehentlich die eine oder andere Verfahrenshandlung unterlassen hat, die in keiner Beziehung zum Mangel der Neuheit, der erfinderischen Tätigkeit oder der gewerblichen Anwendbarkeit steht.

Der derzeitige Absatz 1 Buchstabe b müßte deshalb allein auf diesen Fall beschränkt werden.

Artikel 166 - Vorbehalte

10 Artikel 166 eröffnet den Vertragsstaaten die Möglichkeit, während eines Zeitraums von 10 Jahren nach Inkrafttreten des Übereinkommens zu bestimmen, daß ,,a) europäische Patente für Nahrungs- und Arzneimittel als solche sowie für landwirtschaftliche oder gartenbauliche Verfahren, auf die nicht bereits Artikel 51 Buchstabe b anwendbar ist, übereinstimmend mit den für nationale Patente geltenden Vorschriften unwirksam sind oder für nichtig erklärt werden können." Einige Staaten, die an den Verhandlungen teilgenommen haben, haben beantragt, die Vorbehalte auf chemische Erzeugnisse auszudehnen und vorzusehen, daß die Frist verlängert werden kann.

Eine auch nur zeitweilige Ausnahme von der Patentierbarkeit in einem Industriebereich, in dem die Investitionen für Forschung und Entwicklung mit zu den umfangreichsten gehören, benachteiligt alle hiervon betroffenen Industrien mit Sitz in den Vertragsstaaten, die keine Vorbehalte einlegen, oder in den Nichtvertragsstaaten, die die Patentierbarkeit in dem betreffenden Bereich bereits anerkennen, ganz erheblich. Eine zeitlich unbegrenzte Ausnahme wäre untragbar. Als Übergangslösung könnte eine withdrawn or deemed withdrawn or that the European patent has been revoked.

CEIF draws attention to the fact that in three out of four cases mentioned above (refusal, express withdrawal, revocation) it would not seem advisable to provide such a right to conversion which inevitably would lead to wasteful overburdening of national offices doing examination, and for those States where patent applications are not examined, to unjustified apparent restriction of the public domain. It seems in fact unlikely that a European State will ratify the European Patent Convention without adopting nationally, if this is not already the case, the same requirements for patentability as in Article 50, paragraph 1, stemming from the Strasbourg Convention of 1963.

The case of a European patent application deemed withdrawn on terms other than those of Article 135, paragraph 1(a), is a different matter. Here the applicant may merely by mistake or inadvertently have failed to carry out some step in the procedure, unrelated to a lack of novelty, inventive step or industrial application. Paragraph 1(b) should therefore be limited to this case only.

Article 166 - Reservations

10 Article 166 gives Contracting States the right for a period of ten years from the entry into force of the Convention to provide that "(a) European patents in respect of food and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 51, sub-paragraph (b) applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable."

Some States in the negotation have asked for this reservation to be extended to chemicals and for the period to be open to prolongation.

An exception to patentability, even if only temporary, in a field of industry where investments in research and development are among the highest, is detrimental to all industrial undertakings concerned in those Contracting States which are not going to make this reservation or in non-Contracting States which already accept patentability in this field. A permanent exception would be intolerable. On a transitional basis it may be envisaged on condition that the States applying the exception use the transitional period to take all economic and legal steps which will allow them at the end of that

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Original: Französisch French (1) Français

STELLUNGNAHME DES

CIFE Rat der Europäischen Industrieverbände

COMMENTS BY CEIF Council of European Industrial Federations

PRISE DE POSITION DU CIFE Conseil des fédérations industrielles d'Europe

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die Vorbehalte geltend gemacht werden können, vom Inkrafttreten des Vertrages an fünf Jahre nicht übersteigt.

Regel 2 (1)

29 Jeder an einem mündlichen Verfahren vor dem Europäischen Patentamt Beteiligte, der sich anstelle der Verfahrenssprache einer anderen Amtssprache des Europäischen Patentamtes bedienen will, sollte verpflichtet sein, dies mindestens 4 Wochen anstelle von 2 Wochen vorher dem Amt mitzuteilen. Dieses sollte die Beteiligten davon sofort in Kenntnis setzen, damit sie sich darauf vorbereiten können.

30 Die gleiche Frist und das gleiche Verfahren sollten auch eingehalten werden, sofern ein Beteiligter selbst für die Übersetzung in die Verfahrenssprache sorgt.

Regel 24 (2)

31 Es erscheint wünschenswert, daß das Patentamt in der Empfangsbescheinigung angibt, welche Unterlagen der Anmelder eingereicht hat.

Regel 25 (1) a)

32 Die Vorschrift betreffend die europäische Teilanmeldung nach Erhalt des ersten Bescheids der Prüfungsabteilung erscheint zu einschränkend abgefaBt. Es besteht Anlaß, eine Teilanmeldung jederzeit zuzulassen, vorausgesetzt, daß der geltend gemachte Anspruch in einem Unteranspruch der ursprünglichen Anmeldung enthalten ist.

Regel 27 (1) d)

33 Es sollte klargestellt werden, daß der Anmelder die Angabe der vorteilhaften Wirkungen nachholen und auch die Angaben später wechseln kann. Deshalb besteht Anlaß, den letzten Satz (,außerdem sind . . .") von Regel 27 (1) d) zu streichen.

Regel 28

34 Die U.N.I.C.E. ist der Ansicht, daß die Fassung dieser Regel, die die Mikroorganismen betrifft, may be made to be no longer than five years from the entry into force of the Convention.

Rule 2, paragraph 1

29 Any party to oral proceedings before the European Patent Office who wishes to use one of the other official languages of the Office in lieu of the language of the proceedings, should be required to notify this fact to the Office at least 4 weeks and not 2 weeks in advance. The latter should immediately inform the other parties concerned of the fact so that they may make appropriate preparations.

30 The same time limit and the same procedure should also be applied where the party concerned himself makes provision for interpreting into the language of the proceedings.

Rule 24, paragraph 2

31 The European Patent Office should indicate on the receipt the documents submitted by the applicant.

Rule 25, paragraph 1(a)

32 The provision governing the filing of a European divisional application after receipt of the first communication from the Examining Division would appear to be too restrictive. A divisional application should be permitted at any time provided that the claim sought appears as a subsidiary claim in the earlier application.

Rule 27, paragraph 1(d)

33 It should be made clear that the applicant may supplement the statement of the advantageous effects of the invention and even subsequently amend such statements. The last phrase ("and state . . .") in Rule 27, paragraph 1(d), should therefore be deleted.

Rule 28

34 UNICE is of the opinion that the wording of this Rule, which deals with micro-organisms, should be

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22 Die U.N.I.C.E. ist der Ansicht, daß die Umwandlung in den in Absatz (1)b) vorgesehenen Fällen ausgeschlossen werden sollte. Dies erfordert nicht nur die Streichung des Absatzes (1)b), sondern ein formelles Verbot für die Vertragsstaaten, die Umwandlung in den aufgezeigten Fällen zuzulassen.

Artikel 157

23 Es ist wünschenswert, in einer Notiz im Europäischen Patentblatt auf die Veröffentlichung internationaler Anmeldungen nach Artikel 21 des Zusammenarbeitsvertrages hinzuweisen, damit die interessierten Kreise einen Gesamtüberblick über die eingereichten Anmeldungen haben können, wenn sie nur die Veröffentlichungen dieses Patentblattes verfolgen.

Artikel 161

Eine Klärung erscheint wünschenswert, ob für alle Anmeldungen ein Recherchenbericht erstellt wird, auch wenn sie anschließend nicht weiterverfolgt werden können.

Artikel 162

25 Um zu vermeiden, daß der englische Text, der den Begriff ,,professional representatives" verwendet, zu einer Auslegung führt, die mit dem deutschen und französischen Text nicht vereinbar ist (im Deutschen: ,zugelassener Vertreter", im Französischen: "mandataires agréés"), sollte in einer Randnote präzisiert werden, daß dieser Begriff Angestellte und Freiberufliche umfaßt.

26 Der verbesserte Text des Artikels 162 enthält noch einige Spuren der alten Fassung, die den vorgenommenen Veränderungen angepaBt werden sollten. Hierzu schlägt die U.N.I.C.E. einen Text vor, der als Anlage 1 beigefügt ist.

Während der Anhörung der interessierten Kreise in Luxemburg im Januar 1972 hat der Präsident der Konferenz die Absicht der Konferenz der Sachverständigen unterstrichen, während der Übergangsperiode die vorhandene Lage und die erworbenen Rechte zu respektieren, ohne sie auszuweiten oder einzuschränken. Diesbezüglich ist darauf hinzuweisen, daß die gegenwärtigen Rechte zur Vertretung anderer Gesellschaften, über die Gesellschaften in manchen Mitgliedstaaten verfügen, vergessen worden sind. Folglich wird vorgeschlagen, einen Artikel 161 bis aufzunehmen, dessen Fassung als Anlage 2 beigefügt ist.

Artikel 166 (2) a)

28 Die U.N.I.C.E. wünscht, daß die Frist, während der

22 UNICE considers that conversion should be excluded in the circumstances laid down in paragraph 1 (b). This would not only require paragraph 1(b) to be deleted, but also require the Contracting States to the Convention to be formally prohibited from allowing conversions in such cases.

Article 157

23 The European Patent Bulletin should contain a note on the publication under Article 21 of the Cooperation Treaty of international applications so that the interested circles may obtain an overall view of the applications filed by consulting this Bulletin alone.

Article 161

24 It should be clarified whether or not search reports should be drawn up for all applications even where they cannot be followed up.

Article 162

25 In order to avoid the English text, which uses the term "professional representatives", suggesting an interpretation which is incompatible with the German and French texts (in German: "zugelassener Vertreter", in French: "mandataires agréés"), it should be stated in a note in the margin that this term comprises both persons exercising the profession on a self-employed basis and those doing so on a salaried basis.

26 The improved text of Article 162 still contains some traces of the old version which should be adjusted to the amendments made. In this connection, UNICE proposes a text which is enclosed in Annex 1.

27 At the hearing of the interested circles in Luxembourg in January 1972, the President of the Conference stressed the wish of the Conference of Experts that existing positions and rights should be observed during this transitional period, and should not be either extended or diminished. It should be noted in this connection that the rights of companies in certain States to represent other companies have been forgotten and it is therefore requested that an Article 161a should be added, the wording of which is given in Annex 2.

Article 166, paragraph 2(a) 28 UNICE wishes the period within which reservations

UNICE

Union der Industrien der Europäischen Gemeinschaft

COMMENTS BY

UNICE Union des Industries de la Communauté européenne

PRISE DE POSITION DE

L'UNICE Union des Industries de la Communauté européenne (1) Deutsche Ubersetzung der Stellungnahme und der Anlage 2 vorgelegt von UNICE (2) Annex 3 to these Comments submitted by UNICE in English

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im Rahmen des Artikels 94 nicht als eine im Ermessen des Verwaltungsrats liegende Gunst, sondern als ein Recht zuerkannt werden, das ihnen aufgrund der vom Verwaltungsrat beschlossenen Verlängerung der Fristen automatisch zusteht.

Artikel 98 - Einspruch

13 Die STÄNDIGE KONFERENZ begrüßt es, daß es ein Einspruchsverfahren gibt, und zwar vor allem insofern, als dieses das einzige öffentliche kontra diktorische Verfahren vor einer europäischen Instanz über die Gültigkeit und den Umfang des europäischen Patents darstellt. Dieses Verfahren könnte die Ausarbeitung einer gemeinsamen Doktrin für diese beiden wichtigen Fragen begünstigen, die im Prinzip dem Ermessen der nationalen Gerichte überlassen bleiben.

Artikel 104 - Beitritt des Patentverletzers zum Einspruchsverfahren

14 Die STÄNDIGE KONFERENZ begrüßt es, daß der vermeintliche Patentverletzer, gegen den eine Verletzungsklage erhoben worden ist, einem anhängigen Einspruchsverfahren beitreten kann. Sie ist der Ansicht, daß - um ihren zu Artikel 67 vorgetragenen Bedenken Rechnung zu tragen - außerdem eine Ausweitung dieser Bestimmung geprüft werden sollte, die es dem vermeintlichen Patentverletzer, gegen den Klage erhoben worden ist, ermöglichen würde, unmittelbar beim Europäischen Patentamt eine Stellungnahme über die Gültigkeit und die Tragweite des betreffenden Patents zu beantragen.

Artikel 124 - Ergänzender europäischer Recher-

chenbericht

15 Die STÄNDIGE KONFERENZ begrüßt es, daß dem Europäischen Patentamt die Möglichkeit gegeben ist, jederzeit und insbesondere in dem in Artikel 156 des Übereinkommens vorgesehenen Fall beim Internationalen Patentinstitut einen ergänzenden Bericht über den Stand der Technik einzuholen. Es muß allein Sache des Europäischen Patentamts sein, das für die Erteilung des Titels verantwortlich ist, unter Berücksichtigung der ihm vorliegenden Angaben darüber zu befinden, ob die Einholung dieses Berichts angezeigt ist.

Artikel 166 - Vorbehalte

16 Die STÄNDIGE KONFERENZ bedauert, daß den Staaten die Möglichkeit belassen bleibt, während eines Zeitraums von 10 Jahren sowohl hinsichtlich der Patentierbarkeit der Nahrungs- und Arzneimittel und der Agrar- oder Gartenbauerzeugnisse als auch in bezug auf die Laufzeit des europäischen Patents Vorbehalte geltend zu machen. Falls durch eine solche Möglichkeit die Ratifizierung des Übereinkommens erleichtert werden kann, so würde sie sich damit einverstanden erklären, daß diese Vorbehalte für eine Höchstdauer von fünf Jahren eingelegt werden können. them under Article 94, not as a favour left to the discretion of the Administrative Council, but as a right which is automatically granted where the Council decides to extend the period in question.

Article 98 - Opposition

13 The STANDING CONFERENCE is in favour of there being opposition proceedings particularly since they constitute the only proceedings which may be brought before a European body involving a dispute as to the validity and extent of a European patent. These proceedings are likely to encourage the development of common jurisprudence on these two major problems which have basically been left to the interpretation of national courts.

Article 104 - Intervention of the infringer in the opposition proceedings

14 The STANDING CONFERENCE supports the possibility accorded to the assumed infringer against whom proceedings for infringement have been instituted to intervene in opposition proceedings. It considers that, in order to take account of the concern expressed with regard to Article 67, the possibility of extending this provision should be examined so that an assumed infringer against whom proceedings for infringement have been instituted may request the opinion of the European Patent Office as to the validity and scope of the patent in question by means of direct action.

Article 124 - Supplementary European search report

15 The STANDING CONFERENCE supports the possibility accorded to the European Patent Office to obtain at any time a supplementary search report on the state of the art from the International Patent Institute, particularly in the case provided for under Article 156 of the Convention. The European Patent Office, which is responsible for the grant of patent, must be the sole judge of the desirability of obtaining a supplementary report having regard to the information at its disposal for taking its decision on the application.

Article 166 - Reservations

16 The STANDING CONFERENCE deplores the option granted to the Contracting States to make reservations, which will be valid for a period of ten years, both as concerns the patentability of food and pharmaceutical products and agricultural or horticultural processes and as concerns the period of validity of European patents. If it is felt that such an option would encourage States to ratify the Convention, it could accept these reservations being limited to a maximum period of five years.

StKIHK

Ständige Konferenz der Industrie- und Handelskammern der Europäischen Wirtschaftsgemeinschaft

COMMENTS BY

CPCCI Standing Conference of the Chambers of Commerce and Industry of the European Economic Community

PRISE DE POSITION DE LA

CPCCI Conférence Permanente des Chambres de Commerce et d'Industrie de la Communauté Économique Européenne

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COPRICE versteht die Gründe, die die Annahme dieses Artikels ratsam erscheinen ließen. Er schlägt jedoch vor, die in Artikel 166 Absatz 2 vorgesehene Frist von zehn auf fünf Jahre zu verkürzen.

14 Regel 2 - Ausnahmen von der Verfahrenssprache im mündlichen Verfahren

Die Regel 2 Absatz 1 gibt dem Beteiligten die Möglichkeit, die Verfahrenssprache zu wechseln, sofern er dies entweder dem Patentamt zwei Wochen vorher mitteilt oder selbst für die Übersetzung in die Verfahrenssprache sorgt. Die Regel 2 Absatz 2 ermächtigt hingegen die Bediensteten des Europäischen Patentamts, sich anstelle der Verfahrenssprache einer anderen Amtssprache des Europäischen Patentamts zu bedienen. Die Diskrepanz zwischen diesen beiden Bestimmungen ist offensichtlich. Es wird vorgeschlagen, der Regel 2 Absatz 2 eine Bestimmung hinzuzufügen, wonach die Bediensteten, die die Verfahrenssprache wechseln und sich einer anderen Amtssprache des Patentamts bedienen möchten, einen Dolmetscher hinzuziehen müssen.

COPRICE understands the reasons why this Article has been adopted. However, it proposes that the period laid down in Article 166, paragraph 2, should be reduced from ten to five years.

14 Rule 2 - Derogations from the provisions concerning the language of the proceedings in oral proceedings

Rule 2, paragraph 1, authorises any party requesting to do so to change the language of the proceedings on condition that he gives notice to the European Patent Office two weeks in advance or makes provision for interpreting into the language of the proceedings. Rule 2, paragraph 2, on the other hand, authorises employees of the European Patent Office, in lieu of the language of the proceedings, to use one of the other official languages of the European Patent Office. The disparity between these two provisions is evident. It is proposed that a provision be added to Rule 2, paragraph 2, requiring employees wishing to change the language of the proceedings and use one of the other official languages of the European Patent Office to be assisted by an interpreter.

COPRICE

Comité pour la Protection de la propriété industrielle dans la Communauté économique européenne

COMMENTS BY

COPRICE Comité pour la Protection de la propriété industrielle dans la Communauté économique européenne

PRISE DE POSITION DU

COPRICE Comité pour la Protection de la propriété industrielle dans la Communauté économique européenne

MUNCHNER DIPLOMATISCHE KONFERENZ

ÜBER DIE EINFÜHRUNG EINES EUROPÄISCHEN PATENTERTEILUNGSVERFAHRENS 1973 (München, 10. September bis 6. Oktober 1973)

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS, 1973 (Munich, 10 September to 6 October 1973)

CONFÉRENCE DIPLOMATIQUE DE MUNICH

POUR L'INSTITUTION D'UN SYSTÈME EUROPÉEN DE DÉLIVRANCE DE BREVETS (1973) (Munich, 10 septembre - 6 octobre 1973)

STELLUNGNAHMEN

zu den vorbereitenden Dokumenten herausgegeben von der Regierung der Bundesrepublik Deutschland

COMMENTS

on the preparatory documents published by the Government of the Federal Republic of Germany

PRISES DE POSITION sur les documents préparatoires publiées par le Gouvernement de la République fédérale d'Allemagne

Page 67

(2) Jeder Vertragsstaat kann sich für eine Ubergangszeit von zehn Jahren nach Inkrafttreten dieses Ubereinkommens das Recht vorbehalten zu bestimmen, daß a) europäische Patente für Nahrungs- und Arzneimittel als solche sowie für landwirtschaftliche oder gartenbauliche Verfahren, auf die nicht bereits Artikel 51 Buchstabe b anwendbar ist, übereinstimmend mit den für nationale Patente geltenden Vorschriften unwirksam sind oder für nichtig erklärt werden können; b) europäische Patente übereinstimmend mit den für nationale Patente geltenden Vorschriften eine kürzere Laufzeit als zwanzig Jahre haben; c) das Protokoll über die Anerkennung von Entscheidungen über den Anspruch auf Erteilung eines europäischen Patents für ihn nicht verbindlich sein soll. (3) Jeder Vertragsstaat, der einen Vorbehalt gemacht hat, nimmt ihn zurück, sobald es die Umstände gestatten. Die Zurücknahme des Vorbehalts erfolgt durch eine an die Regierung der Bundesrepublik Deutschland gerichtete Notifikation und wird einen Monat nach dem Tag des Eingangs der Notifikation wirksam. (4) Alle Vorbehalte werden mit Ablauf der Ubergangszeit nach Absatz 2 unwirksam. (1) Jeder Vertragsstaat kann in seiner Ratifikationsoder Beitrittsurkunde oder zu jedem späteren Zeitpunkt durch eine Notifikation an die Regierung der Bundesrepublik Deutschland erklären, daß das Ubereinkommen auf alle oder einzelne Hoheitsgebiete anwendbar ist, für deren auswärtige Beziehungen er verantwortlich ist. Die für den betreffenden Vertragsstaat erteilten europäischen Patente haben auch in den Hoheitsgebieten Wirkung, für die eine solche Erklärung wirksam ist. (2) Ist die in Absatz 1 genannte Erklärung in der Ratifikations- oder Beitrittsurkunde enthalten, so wird sie gleichzeitig mit der Ratifikation oder dem Beitritt wirksam; wird die Erklärung nach der Hinterlegung der Ratifikations- oder Beitrittsurkunde in einer Notifikation abgegeben, so wird diese Notifikation sechs Monate nach dem Tag des Eingangs der Notifikation bei der Regierung der Bundesrepublik Deutschland wirksam. (3) Jeder Vertragsstaat kann jederzeit erklären, daß das Ubereinkommen für alle oder einzelne Hoheitsgebiete, für die er nach Absatz 1 eine Notifikation vorgenommen hat, nicht mehr anwendbar ist. Diese Erklärung wird ein Jahr nach dem Tag wirksam, an dem sie der Regierung der Bundesrepublik Deutschland notifiziert worden ist, sofern die Mitgliedschaft des betreffenden Staats am Ubereinkommen nicht nach Artikel 171 Absatz 4 bereits früher erloschen ist. (2) Each Contracting State may reserve, for a period of ten years from the entry into force of this Convention, the right to provide that: (a) European patents in respect of food and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 51, sub-paragraph (b), applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (b) European patents shall have a term shorter than twenty years, in accordance with the provisions applicable to national patents; (c) it shall not be bound by the Protocol on the Recognition of Decisions in respect of the Right to the Grant of a European Patent. (3) Any Contracting State that has made a reservation shall withdraw this reservation as soon as circumstances permit. Such withdrawal shall be made by notification addressed to the Government of the Federal Republic of Germany and shall take effect one month from the date of receipt of such notification. (4) Any reservation shall cease to have effect on expiry of the period laid down in paragraph 2.

Article 167

Territorial field of application (1) Any Contracting State may declare in its instrument of ratification or accession, or may inform the Government of the Federal Republic of Germany by written notification any time thereafter, that this Convention shall be applicable to one or more of the territories for the external relations of which it is responsible. European patents granted for that Contracting State shall also have effect in the territories for which such a declaration has taken effect. (2) If the declaration referred to in paragraph 1 is contained in the instrument of ratification or accession, it shall take effect on the same date as the ratification or accession; if the declaration is made in a notification after the deposit of the instrument of ratification or accession, such notification shall take effect six months after the date of its receipt by the Government of the Federal Republic of Germany. (3) Any Contracting State may at any time declare that the Convention shall cease to apply to some or to all of the territories in respect of which it has given a notification pursuant to paragraph 1. Such declaration shall take effect one year after the date on which the Government of the Federal Republic of Germany received notification thereof, unless the State concerned has earlier ceased to be a party to the Convention, pursuant to Article 171, paragraph 4.

Artikel 163

Ausführungsordnung und Protokolle (1) Die Ausführungsordnung, das Protokoll über die Anerkennung von Entscheidungen über den Anspruch auf Erteilung eines europäischen Patents, das Protokoll über die Vorrechte und Befreiungen der Europäischen Patentorganisation und das Protokoll über die Zentralisierung des europäischen Patentsystems und seine Einführung sind Bestandteile des Übereinkommens. (2) Im Fall mangelnder Übereinstimmung zwischen Vorschriften des Übereinkommens und Vorschriften der Ausführungsordnung gehen die Vorschriften des Übereinkommens vor.

Artikel 164

Unterzeichnung - Ratifikation (1) Dieses Übereinkommen liegt für die Staaten, die an der Regierungskonferenz über die Einführung eines europäischen Patenterteilungsverfahrens teilgenommen haben oder die über die Abhaltung einer solchen Konferenz unterrichtet worden sind und denen die Möglichkeit der Teilnahme geboten worden ist, bis zum . . . zur Unterzeichnung auf. (2) Dieses Übereinkommen bedarf der Ratifikation; die Ratifikationsurkunden werden bei der Regierung der Bundesrepublik Deutschland hinterlegt.

Beitritt

(1) Dieses Übereinkommen steht nach Ablauf der Frist für die Unterzeichnung den in Artikel 164 Absatz 1 genannten Staaten zum Beitritt offen. (2) Nach Inkrafttreten dieses Übereinkommens kann jeder andere europäische Staat auf Einladung des Verwaltungsrats dem Übereinkommen beitreten. (3) Jeder Staat, der Vertragsstaat des Übereinkommens war und dessen Mitgliedschaft aufgrund von Artikel 171 Absatz 4 erloschen ist, kann durch Beitritt erneut Mitglied des Übereinkommens werden. (4) Die Beitrittsurkunden werden bei der Regierung der Bundesrepublik Deutschland hinterlegt.

Artikel 166

Vorbehalte (1) Jeder Vertragsstaat kann bei der Unterzeichnung oder bei der Hinterlegung seiner Ratifikations- oder Beitrittsurkunde nur die in Absatz 2 vorgesehenen Vorbehalte machen.

Article 163
Implementing Regulations and Protocols

(1) The Implementing Regulations, the Protocol on the Recognition of Decisions in respect of the Right to the Grant of a European Patent, the Protocol on Privileges and Immunities of the European Patent Organisation and the Protocol on the Centralisation of the European Patent System and on its Introduction shall be integral parts of this Convention. (2) In the case of conflict between the provisions of this Convention and those of the Implementing Regulations, the provisions of this Convention shall prevail.

Article 164

Signature - Ratification (1) This Convention shall be open for signature until... by the States which took part in the InterGovernmental Conference for the setting up of a European System for the Grant of Patents or were informed of the holding of that Conference and offered the option of taking part therein. (2) This Convention shall be subject to ratification; instruments of ratification shall be deposited with the Government of the Federal Republic of Germany.

Article 165

Accession (1) This Convention shall be open to accession by the States referred to in Article 164, paragraph 1, after the expiry of the period for signature. (2) After the entry into force of this Convention, any other European State may accede to it at the invitation of the Administrative Council. (3) Any State which has been a party to the Convention and has ceased so to be as a result of the application of Article 171, paragraph 4, may again become a party to the Convention by acceding to it. (4) Instruments of accession shall be deposited with the Government of the Federal Republic of Germany.

Article 166 Reservations (1) Each Contracting State may, at the time of signature or when depositing its instrument of ratification or accession, make only the reservations specified in paragraph 2.

MÜNCHNER DIPLOMATISCHE KONFERENZ
ÜBER DIE EINFÜHRUNG EINES EUROPÄISCHEN PATENTERTEILUNGSVERFAHRENS 1973

(München, 10. September bis 6. Oktober 1973)

MUNICH DIPLOMATIC CONFERENCE

FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS, 1973 (Munich, 10 September to 6 October 1973)

CONFERENCE DIPLOMATIQUE DE MUNICH

POUR L'INSTITUTION D'UN SYSTÈME EUROPÉEN DE DÉLIVRANCE DE BREVETS (1973) (Munich, 10 septembre - 6 octobre 1973)

VORBEREITENDE DOKUMENTE

ausgearbeitet von der Regierungskonferenz über die Einführung eines europäischen Patenterteilungsverfahrens herausgegeben von der Regierung der Bundesrepublik Deutschland

PREPARATORY DOCUMENTS

drawn up by the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents and published by the Government of the Federal Republic of Germany

DOCUMENTS PRÉPARATOIRES

élaborés par la Conférence intergouvernementale pour l'institution d'un système européen de délivrance de brevets et publiés par le Gouvernement de la République fédérale d'Allemagne

Page 70

The French delegation in particular hoped that the solution to be sought would correspond to a more clearly defined system than that dealt with in Document No. 16.

The German delegation said it was also in favour of finding a compromise solution.

Article 164

56. The Conference had before it a proposal from the United Kingdom delegation (cf. BR/216/72) to the effect that Article 2 be completed by a new paragraph 3 specifying that the patents granted for a Contracting State will also have effect in a territory for which the State has made a declaration within the meaning of Article 164.

57. The Conference decided to insert in Article 164 a sentence meeting the request of the United Kingdom delegation.

Article 165

58. The United Kingdom delegation observed that the figure of 180,000 applications contained in paragraph 1 could be re-examined at the Diplomatic Conference.

Article 169

59. The Conference had before it a proposal from the United Kingdom delegation (cf. BR/216/72). This proposal had previously been examined by the Co-ordinating Committee (cf. BR/218/72, point 15).

Page 71

Article 163 54. The Conference had before it a written statement by the Spanish, Portuguese and Yugoslav delegations (Working Document No. 16). This statement had previously been examined by the Co-ordinating Committee (cf. BR/218/72, points 13 and 14).

The Conference took note of the joint statement by the aforementioned delegations.

The Turkish delegation gave its support to the statement.

The Greek delegation also supported the spirit of the statement, stressing that by reason of its political nature the question of reservations could only be dealt with by the Diplomatic Conference.

The Yugoslav delegation said that the content of the statement submitted should be taken as applying also to the provision envisaged by the Conference for the patentability of a known substance used for the first time for therapeutic purposes, as referred to in Article 50, paragraph 3 and Article 52, paragraph 5, in conjunction with Article 50, paragraph 2(d). 55. The French and Netherlands delegations said that they understood the concern of the aforementioned delegations, and that in view of the importance they attach to these countries being able to accede to the Convention they were willing to seek compromise solutions before the opening of the Diplomatic Conference.

Page 72

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 26 September 1972 BR/219/72

- Secretariat -

MINUTES of the

6th meeting of the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents (Luxembourg, 19 to 30 June 1972)

Page 73

14. During the discussion on this point, the Netherlands delegation put forward the possibility of allaying the concern expressed by the Spanish, Portuguese and Yugoslav delegations by adding a further provision to Article 163 to the effect that for any State which had not ratified or acceded to the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention, the 10-year period provided for in paragraph 2 of that Article could be extended by 5 years by a decision of the Administrative Council taken by a qualified majority vote. In addition, the option to make reservations provided for under Article 163, paragraph 2(a) could apply in respect of these States to chemical products too.

The French and Swedish delegations expressed their interest in this proposal.

The other delegation, while stating their willingness to help seek a solution, considered that it was premature to seek a concrete solution, and that the suggestion by the Netherlands delegation could have the undesirable effect of delaying the ratification of the Strasbourg Convention by certain States.

Article 169 15. The Committee adopted, subject to a drafting change, the proposal made by the United Kingdom delegation in BR/216/72 to amend Article 169, paragraph 2, in such a way as to make the decision of the International Court of Justice binding on the Contracting States concerned.

Page 74

12. The Committee then went on to examine the French delegation's proposal (cf. Working Document No. 21) that it be made clear in Rule 25, paragraph 1(a), that a divisional application may be filed at any time after the applicant has been informed that the earlier European patent application has been received by the European Patent Office. The French delegation pointed out the disadvantage there might be in an applicant filing a divisional application without having received this information, as it was possible that the earlier application was in fact still being examined for secrecy by the national authorities and that certain elements of interest to national defence could thus inadvertently come to the European Patent Office in the divisional application.

The Committee did not adopt this proposal on the grounds that Rule 24, paragraphs 2 and 4, made sufficient provision for informing the applicant.

The French delegation maintained a reservation in respect of Rule 25, paragraph 1(a).

Article 163

13. The Committee examined the joint statement by the Spanish, Portuguese and Yugoslav delegations (cf. Working Document No. 16).

After a wide-ranging discussion it was agreed that the Committee would suggest to the Conference that it take note of this statement, as the delegations concerned had not submitted a proposal to amend the text of Article 163 during the present Conference. It was understood that each delegation represented in the Committee would be free to submit more detailed declarations of intent with a view to finding solutions to the questions raised in the joint statement.

Page 75

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 26 September 1972 BR / 218 / 72

- Secretariat -

MINUTES

of the

3rd meeting of the Co-ordinating Committee (Luxembourg, 23, 24 and 27 Jene 1972)

1. During the 6th Meeting of the Inter-Governmental Conference the Co-ordinating Committee met several times under the Chairmanship of Dr. K. HAERTEL to prepare the Conference's discussions of the proposals submitted to it by various delegations.

BR/218 e/72 loz/PA/prk

Page 76

Article 163 (159 + 168) Reservations (1) Each Contracting State may, at the time of signature or when depositing its instrument of ratification or accession, make only the reservations specified in paragraph 2 . (2) Each Contracting State may reserve, for a period of ten years from the entry into force of this Convention, the right to provide that: (a) European patents in respect of food and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 51, sub-paragraph (b), applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (b) European patents shall have a term shorter than twenty years, in accordance with the provisions applicable to national patents; (c) it shall not be bound by the Protocol on the Recognition of Decisions in respect of the Right to the Grant of a European Patent. (3) Any Contracting State that has made a reservation shall withdraw this reservation as soon as circumstances permit. Such withdrawal shall be made by notification addressed to the Government of ... and shall take effect one month from the date of receipt of such notification. (4) Any reservation shall cease to have effect on expiry of the period laid down in paragraph 2.

Page 77

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- Secretariat -

Brussels, 25 May 1972 BR/199/72

Deutsches Patentamt Eing. 31. MA1:372 Fax: □ Saksat: 624/72 (OR

DRAFT CONVENTION ESTABLISHING A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS (Stage reached on 20 May 1972)

BR/199 e/72

Page 78

States had advocated that the competency of the Internationa: Court of Justice should be recognised in the largest possible number of disputes. They should not therefore make exceptions in the case of this Convention. The Conference endorsed this proposal and amended paragraph 2 accordingly. This removed the point of Articles 3 to 6 and the proposed amendments submitted by the German and Austrian delegations.

Article 169 (Limitation of reservations) 144. The Conference wished to specify, by means of an express reference to Article 158, that reservations apart from those provided for in that Article were not admissible.

Article 171 (Denunciation) 145. Paragraph 2 was transferred to Article 173, paragraph 2, along with a number of other provisions which provide that the Contracting States are to be informed by the State with whose Government the instruments of ratification are to be deposited (BR/117/71, Page 10).

Paragraph 3, which governed the preservation of acquired rights in the event of denunciation in a similar manner to Article 163, was combined with the latter provision to form a new Article 171a (BR/118/71; Page 20).

Page 79

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 7 July 1971 B R / 125 / 71

- Secretariat -

M I N U T E S

of the 4th Meeting of the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents (Luxembourg, 20 to 28 April 1971)

Page 80

Article 169 Limitation of reservations

Signature or ratification of or accession to the Convention may not be subject to any reservations other than those provided for herein.

Page 81

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 15th February 1971 B R / 88 / 71

- Secretariat -

FIRST PRELIMINARY DRAFT OF A CONVENTION ESTABLISHING A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- Stage reached on 29 January 1971 -

Page 82

Other delegations, while accepting the idea of a limited period of validity for a reservation, asked that this period of validity be calculated as from the entry into force of the Convention for the Contracting State which had made a reservation within the meaning of Article 158. This would be in line with what was laid down in Article 12 of the Strasbourg Convention.

Opposing these requests, the majority of the delegations observed that for reasons of legal security, a fixed and uniform date on which these reservations should cease to have effect should be laid down for all States, so that the applicant for a European patent would not be obliged to allow indefinitely for different legal situations in the different Contracting States.

In conclusion, the Conference decided on a period of ten years, calculated as from the entry into force of the Convention within the meaning of Article 166, paragraph 1.

Article 159 (Period within which a request for examination may be made during a transitional period)

The great majority of delegations was in favour of deleting this Article. They considered that it would be illogical to provide that as soon as the European Patent Office began to function, the system of examination with a period of about two years, as laid down in Article 88, be replaced by a system of deferred examination. Such a provision would be dangerous, since it might create difficulties when the time came to change from this system to the system laid down in Article 88. In addition, it might be unnecessary.

Article 158 (Reservations)

83. Since several delegations stressed that the possibility of making a reservation might be important in facilitating their sccession to the Convention; the Conference agreed to maintain a provision to this effect. 84. Certain delegations asked that chemical products should aldo be included in paragraph 1 (a).

It was observed that Article 158, as it stands at present, was in line, with regard to the content of reservations, with Article 12 of the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention and that it was already a compromise solution which took into account the special situation in certain countries.

In conclusion, the Conference decided not to extend to chemical products the possibility of making a reservation as regards patentability. 85. Certain delegations asked that paragraph 2 and the words "limited period" in paragraph 1 be deleted so that no period of validity was attached to the reservations. A decision as to when to withdraw the reservation should be left to the discretion of the Contracting States who had made the reservation, or possibly linked to a criterion such as the development of national legislation.

Page 84

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- Secretariat -

Brussels, 7 July 1971 BR / 125 / 71

M I N U T E S

of the 4th Meeting of the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents (Luxembourg, 20 to 28 April 1971)

Page 85

Article 158 Reservations

(1) Each Contracting State may, at the time of signature or when depositing its instrument of ratification or accession, reserve, for the limited period stated below, the right to provide : (a) that, by derogation from Article 133, European patents in respect of food and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 10 (b) applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (b) that, by derogation from Article 20a, European patents shall have a term shorter than twenty years, in accordance with the provisions applicable to national patents. (2) The limited period referred to in paragraph 1 shall be √( five 7 ten 7) years. It shall start from the entry into force of this Convention. (3) Any Contracting State that makes a reservation under this Article shall withdraw this reservation as soon as circumstances permit. Such withdrawal shall be made by notification addressed to ... and shall take effect one month from the date of receipt of such notification. 7

Page 86

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 15th February 1971 B R / 88 / 71

- Secretariat -

FIRST PRELIMINARY DRAFT OF A CONVENTION ESTABLISHING A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- Stage reached on 29 January 1971 -

Page 87

Rules relating to Fees - Article 2 163. EIRMA pointed out that the ratio of the envisaged amounts for the opposition and appeal fees (1:4) was not a reasonable one, as the examination of the opposition and the examination of the appeal involved approximately the same amount of work.

Page 88

Article 159 (Reservations)

161. EIRMA pointed out that allowance for reservations was contrary to the "maximum" solution to which the interested parties were very attached. It also pointed out that the exclusion of pharmaceuticals was all the less justifiable in that chemical products would be patentable, and the narrow differences between the terms of national patents and the term envisaged for the European patent did not justify the option of reservations.

However, having regard in particular to the statements by the Spanish and Yugoslav delegations (BR/159/72 and BR/164/72), EIRMA suggested a compromise formula whereby the period during which reservations would be accepted would be reduced to five years and reservations could only be made as to the patentability of pharmaceutical products. The term of the European Patent would be fixed for a standard twenty years. In addition, during the period when reservations would be accepted, the filing of different claims in the light of reservations should be permitted; Article 138 should consequently be adapted.

The opinion expressed by EIRMA was shared by CEIF, IAPIP, UNICE, UNEPA and COPRICE.

162. The ICC pointed out that Article 159 raised the fundamental problem of choosing between total standardisation of the patent system under the Convention, even if this meant the latter being ratified at the outset by a smaller number of States, and seeking to achieve the immediate participation of the maximum number of countries, by introducing the possibility of reservations. The ICC stated that it was in favour of the first approach and therefore did not support the suggestion put forward by EIRMA.

Page 89

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 15 March 1972 BR/169/72

- Secretariat -

M I N U T E S

of the

5th Meeting of the Inter-Governmental Conference for the Setting up of a European System for the Grant of Patents

Part II

Hearing of the non-governmental international organisations on the Second Preliminary Draft of a Convention establishing a European System for the Grant of Patents (Luxembourg, 26 January to 1 February 1972)

Page 90

161. The Italian, French and Lustrian delegations stated that they thought it very important that the problem should be carefully examined, taking into account the desirability of the greatest possible number of European countries being able to take part in the Convention. 162. The Conference thought the problem was worth thinking about but that, in view of its nature, there was no need to refer it to Working Party I. it its 6th meeting the Conference could examine any proposals which might be submitted to it.

Article 160b (Appointment of senior officials during a transitional period) 163. The United Kingdom delegation expressed a reservation on this provision, since members of legal authorities or services outside the European Patent Office would thus be called upon.

Page 91

158. The request by one delegation that the words "or of his successor in title" should be added to the words "name of applicant" in sub-paragraph (c) was rejected for the same reason. The Conference was, moreover, of the opinion that "applicant" should be understood in this broader sense.

Article 159 (Reservations)

159. The Conference did not adopt the "maximum approach" proposal by some organisations that this irticle should simply be deleted. However, with a view to going a certain way towards meeting the demands of those organisations, the question was raised of whether the possibility of making reservations provided for in paragraph 1(b), should be retained. 160. The Yugoslav delegation emphasised that it thought irticle 159 seemed too limited in its present form and asked the Conference to re-examine it. It submitted a certain number of arguments in this respect, which are contained in a note in Annex III.

The Spanish delegation also expressed its anxiety concerning irticle 159 as it stood. This delegation's statement on the subject is contained in Annex IV.

The Portuguese delegation supported the statements of the Yugoslav and Spanish delegations.

Page 92

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 15 March 1972 BR / 168 / 72

- Secretariat -

MIN U T E S

of the 5th Meeting of the Inter-Governmental Conference for the Setting up of a European System for the Grant of Patents

Parts 1 and 3

(Luxembourg, 24-25 January and 2-4 February 1972)

Vorbehalte

(1) Jeder Vertragsstaat kann sich bei der Unterzeichnung oder bei der Hinterlegung seiner Ratifikations- oder Beitrittsurkunde für eine Übergangszeit von zehn Jahren nach Inkrafttreten dieses Übereinkommens das Recht vorbehalten zu bestimmen, a) daß in Abweichung von Artikel 133 europäische Patente für Nahrungs- und Arzneimittel als solche sowie für landwirtschaftliche oder gartenbauliche Verfahren, auf die nicht bereits Artikel 10 Buchstabe b anwendbar ist, übereinstimmend mit den für nationale Patente geltenden Vorschriften unwirksam sind oder für nichtig erklärt werden können; b) daß in Abweichung von Artikel 20a europäische Patente übereinstimmend mit den für nationale Patente geltenden Vorschriften eine kürzere Laufzeit als zwanzig Jahre haben. (2) Jeder Vertragsstaat, der aufgrund dieses Artikels einen Vorbehalt macht, nimmt ihn zurück, sobald es die Umstände gestatten. Die Zurücknahme des Vorbehalts erfolgt durch eine an . . . gerichtete Notifikation und wird einen Monat nach dem Tag des Eingangs der Notifikation wirksam. (3) Alle Vorbehalte werden mit Ablauf der Übergangszeit nach Absatz 1 unwirksam.

Artikel 160

Frist zur Stellung des Prüfungsantrags während einer Übergangszeit (1) Während einer Übergangszeit, deren Ende der Verwaltungsrat bestimmt, beträgt die in Artikel 88 Absatz 2 genannte Frist zur Stellung des Prüfungsantrags . . . Jahre nach dem Tag, an dem im Europäischen Patentblatt gemäß Artikel 85 Absatz 5 auf die Veröffentlichung des Berichts über den Stand der Technik hingewiesen worden ist. Diese Frist kann vom Verwaltungsrat verkürzt werden. (2) Die Beschlüsse nach Absatz 1 werden im Amtsblatt des Europäischen Patentamts veröffentlicht. (3) Die Beschlüsse des Verwaltungsrats nach Absatz 1 sind nur auf die europäischen Patentanmeldungen anwendbar, die nach der Veröffentlichung des jeweiligen Beschlusses eingereicht werden.

Reservations

(1) Each Contracting State may, at the time of signature or when depositing its instrument of ratification or accession, reserve, for a period of ten years from the entry into force of this Convention, the right to provide: (a) that, by derogation from Article 133, European patents in respect of food and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 10, sub-paragraph (b), applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (b) that, by derogation from Article 20a, European patents shall have a term shorter than twenty years, in accordance with the provisions applicable to national patents. (2) Any Contracting State that makes a reservation under this Article shall withdraw this reservation as soon as circumstances permit. Such withdrawal shall be made by notification addressed to ... and shall take effect one month from the date of receipt of such notification. (3) Any reservation shall cease to have effect on expiry of the period laid down in paragraph 1.

Article 160

Period within which a request for examination may be made during a transitional period (1) During a transitional period, the expiry of which shall be determined by the Administrative Council, the period laid down in Article 88, paragraph 2, within which a request for examination may be made, shall be ... years after the date on which the European Patent Bulletin notifies the publication of the report on the state of the art, pursuant to Article 85, paragraph 5. This latter period may be reduced by a decision of the Administrative Council. (2) The decisions referred to in the preceding paragraph shall be published in the Official Journal of the European Patent Office. (3) Any decision of the Administrative Council pursuant to paragraph 1 shall apply only in respect of European patent applications filed after the publication of such decision.

Page 94

REGIERUNGSKONFERENZ ÜBER DIE EINFÜHRUNG EINES EUROPÄISCHEN PATENTERTEILUNGSVERFAHREN INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS CONFERENCE INTERGOUVERNEMENTALE POUR L'INSTITUTION D'UN SYSTEME EUROPEEN DE DELIVRANCE DE BREVETS

ZWEITER VORENTWURF EINES ÜBEREINKOMMENS ÜBER EIN EUROPÄISCHES PATENTERTEILUNGSVERFAHREN

sowie ERSTER VORENTWURF EINER AUSFÜHRUNGSORDNUNG ZUM ÜBEREINKOMMEN ÜBER EIN EUROPÄISCHES PATENTERTEILUNGSVERFAHREN und ERSTER VORENTWURF EINER GEBÜHRENORDNUNG

SECOND PRELIMINARY DRAFT OF A CONVENTION ESTABLISHING A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS with FIRST PRELIMINARY DRAFT OF THE IMPLEMENTING REGULATIONS TO THE CONVENTION ESTABLISHING A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS and FIRST PRELIMINARY DRAFT OF THE RULES RELATING TO FEES

SECOND AVANT-PROJET DE CONVENTION INSTITUANT UN SYSTÈME EUROPÉEN DE DÉLIVRANCE DE BREVETS ainsi que PREMIER AVANT-PROJET DE RÈGLEMENT D'EXÉCUTION DE LA CONVENTION INSTITUANT UN SYSTÈME EUROPÉEN DE DÉLIVRANCE DE BREVETS et PREMIER AVANT-PROJET DE RÈGLEMENT RELATIF AUX TAXES

Page 95

If put into practice, this would prevent a degree of harmonisation higher than that laid down in the Stresbourg Convention being reached.

The British Delegation recalled its reservation with regard to Article 133 (new), and explained the difficulties which it could encounter in transposing the Convention, the Stresbourg Convention and the PCT into internal provisions, especially if, after a first amendment, it proved to be necessary to make other amendments, which would result in delays in Parliament. In order to take this possibility into account the British Delegation stated that it reserved the right to request at a later date that Article 188a (new) should include a reservation concerning the implementation of Article 133(new) (also see point 93).

Article 5: Persons entitled to apply for a European patent (BR/40/70, pages 3 and 4, No. 9)

Taking the provisions of Article 45, paragraph 1, of the PCT Treaty into account, the Working Party decided to amend paragraph 1 of Article 5 of the First Preliminary Draft, so that anyone may apply for a European patent. It also decided to delete paragraph 2.

The French delegation had proposed an intermediate solution which granted free accessibility to nationals of Member States of the Paris Convention, and accessibility on condition of reciprocity for nationals of non-member States of the Paris Convention. This suggestion was not followed by the Working Party, which considered that it was not politically opportune and that it did not seem to be in keeping with Article 45 of the CCT.

Page 96

Article 2Ca (new) - Term of a European Patent (BR/40/70, page 3, No.C) 97. As compared with the corresponding provision in the 1965 Draft, paragraph 1 was amended firstly to define the standard term of the patent more clearly, within the framework of the maximum approach and secondly to define the term of the patent of addition. 98. In order to take a request from the British delegation into account, paragraph 2 refers to the law of a Contracting State if that law lays down - in the circumstances referred to in the said paragraph, different provisions which would also govern national patents.

Article 188a (new) : Reservations 99. With reference to paragraph 2, two opinions prevailed within the Working Party concerning the term of the limited period. It was urged in favour of a relatively short period (5years from the entry into force of the Convention), that this term would in reality be longer, since the period of time between the signing of the Convention and its entry into force would have to be taken into account. In favour of a longer period, ( 10 years from the entry into force of the Convention); it was argued that, for the States which were not parties to the second Convention, it would be adviseable to establish a sufficiently long period of time, so as not to complicate their accession to the Convention. 100. The French delegation, while in favour of the 5 -year term reserved the right to ask the Conference not to lay down a limited period for the provisions of paragraph 1(a), as it seemed contradictory to provide for a maximum approach on the one hand and for the right to make reservations, on the other.

Page 97

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Brussels, 26 October 1970 B R / 49 / 70

- Secretariat -

MINUTES

of the meeting of Working Party I Luxembourg, 7 - 11 September 1970

Agenda item 1 (1): Opening of the meeting and adoption of the provisional agenda

1. The fifth working meeting of Working Party I was held at Luxembourg from Monday 7 to Friday 11 September 1970, with Dr. HAERTEL, President of the German Patent Office, in the Chair.

Representatives of the Commission of the European Communities, WIPO-BIRPI and the International Patent Institute took part in the meeting (2). The representative of the General Secretariat of the Council of Europe sent his apologies for being unable to attend. 2. The Drafting Committee, under the Chairmanship of the President of the Netherlands "Octrooiraad", Mr. J.B. van BENTHEM, held its meetings directly after the meetings of the Working Party. (1) See Annex I for provisional agenda (BR/GT 1/51/70). (2) See Annex II for list of those attending the meeting of the Working Party.

BR/49 e/70 eld/PA/bcc

Reservations

Text drawn up by the Working Party (1) Each Contracting State may, at the time of signature or when depositing its instrument of ratification or accession, reserve, for the limited period stated below, the right to provide: (a) that, by derogation from article 133, European patents in respect of food and pharmaceutical products, as such, and agricultural or horticultural processes other than those to which Article 10 (b) applies, shall, in accordance with the provisions applicable to national patents, be ineffective or revocable; (b) that, by derogation from Article 20a, European patents shall have a term shorter than twenty years, in accordance with the provisions applicable to national patents. (2) The limited period referred to in paragraph 1 shall be ∫ five 7 ∫ ten 7 years. It shall start from the entry into force of this Convention. (3) Any Contracting State that makes a reservation under this Article shall withdraw this reservation as soon as circumstances pernit. Such withdrawal shall be made by notification addressed to ... and shall take effect one month from the date of receipt of such notification. 7

Page 99

INTER-GOVERNMENTAL CONFERENCE FOR THE SETTING UP OF A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

- Secretariat -

Brussels, 23 September 1970 BR/48/70

PRELIMINARY DRAFT CONVENTION FOR A EUROPEAN SYSTEM FOR THE GRANT OF PATENTS

Articles prepared by Working Party I (7 to 11 September 1970)

BU/48 e/70 eld/RT pb

Page 100

Art. 167 MPU

- 2 -

Entwurf, der dem nebenstehenden Dokument zugrunde liegt	Art. Nr. im Entwurf/ Dokument	Dokument, in dem der Art. behandelt wird	Fundstelle im Dokument
E 1972	166	M/116/II	S. 1
"	166	M/130/II/R 6	S. 16
"	166	M/146/R 7	Art. 167
"	166	M/149/G	S. 1
"	166	M/154/G	S. 1
"	166	M/160/K	S. 3
"	166	M/PR/II	S. 125-141
"	166	M/PR/G	S. 180/181,
			208

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Yugoslavia. The Committee, by a majority, rejected these proposals as going too far, but ultimately elaborated a generally acceptable compromise on the basis of a German proposal, as amended in discussion. 11. The amended Article 166 goes further than the 1972 draft in that it extends the possibility of making reservations to new chemical products. It also clarifies the position as regards the effect of a reservation in respect of chemical, pharmaceutical or food products. The Committee accepted the view that such a reservation makes a European patent ineffective or revocable in the reserving country only insofar as the patent confers protection on products, which are not defined by reference to a process of manufacture or use of that product also covered by the patent. 12. It is also now provided in Article 166 that a reservation, other than one in connection with the Protocol on the Recognition of Decisions in respect of the Right to the Grant of a European Patent, not only applies to all European Patents granted on applications filed during the period in which the reservation has effect, but also continues for the whole term of such patents. This means that, in the fields of technology in which a reservation has been entered, the impact of European patents on the economy of the reserving country will be gradual. 13. Mainly for this reason, the majority of the Committee considered that there were insufficient grounds for extending the ten year reservation period to fifteen years or, as had also been suggested, until such time as the reserving country considered itself to be in a position to lift its reservation. However, the majority felt that a degree of flexibility in the reservation period was appropriate, since a country intending to make the necessary change may nevertheless find it impossible to meet the ten year deadline. Accordingly, Article 166 now admits of a single extension of no more than five years if the Administrative Council decides, in the light of a reasoned submission made by the reserving country, that the latter is not in a position to dispense with its reservation by the expiry of the ten year period.

Protocol on Privileges and Immunities

14. The Committee has made a few changes in the provisions of this Protocol, mainly in order to improve their clarity. One point worth mentioning here concerns Article 22, which provides that a Contracting State need not extend certain privileges and immunities to its own nationals or permanent residents. The Committee decided that this derogation should not apply to any person, other than a national of that State, who, at the time of taking up his functions with the European Patent Office, has his permanent residence in that State and is an employee of any other organisation whose staff are to be incorporated into the European Patent Office. This has been done in order to avoid any unfairness towards the staff of the International Patent Institute resulting from their transfer to the European Patent Office.

Protocol on the Centralisation of the European Patent System and on its Introduction

15. Section I.I of the Protocol provides for the transfer of the assets, liabilities and staff of the International Patent Institute to the European Patent Organisation. This is to be effected by an agreement between the Institute and the Organisation which is to be implemented prior to the opening of the European Patent Office for the receipt of patent applications. 16. In order to meet the wishes of Belgium, Italy and Turkey, the obligations of the European Patent Office towards Member

States of the Institute have been extended. As provided for in the 1972 draft, the Office will assume responsibility for carrying out searches for any Member State of the Institute which now submits its national applications to the Institute for this purpose, even though that State does not become party to the Convention. As redrafted, the text now provides that the Office will also assume this responsibility in respect of a Member State of the Institute which, prior to the entry into force of the Convention, has agreed to submit national applications to the Institute for search, provided this State is also a party to the Convention when it enters into force. 17. So far as concerns the Italian sub-office referred to in the third sub-paragraph of Section I.I of the Protocol, it is now provided that the Italian Government shall enter into an agreement with the European Patent Organisation which, consistently with the terms of the Protocol, will put the sub-office in the same situation vis-à-vis the Organisation as it is now vis-à-vis the Institute. 18. Due to language problems and other practical difficulties, the search currently carried out by the International Patent Institute, extensive though it is, does not cover published patent specifications of all the States eligible to become parties to the Convention pursuant to Articles 164 and 165. Many of these specifications are duplicated in other languages which the staff of the Institute can cope with, and to this extent the search is sufficiently wide. It is clear, however, that some specifications, especially those relating to applications which are not used as the basis for filing applications in other countries under the Paris Convention, are not duplicated. The possibility therefore arises of a European Patent being revocable because of a prior specification in the language of a Member State which is not among the search material of the Institute. Moreover, it is possible that specifications and other technical literature, which are of considerable relevance in certain fields of technology, are available only in the language of one State. Mainly for these reasons, the Committee decided on the basis of proposals made by Finland, Italy and Norway that following the absorption of the Institute by the Office, the search should in principle be extended to published patent specifications and other technical literature not contained in the search material of the European Patent Office when it opens for receipt of European patent applications. This is now stated in Section VIa of the Protocol. The Committee recognised, however, that any such extension of the search would be likely to have an appreciable impact on costs and on the level of staffing of the Search Department of the European Patent Office. In view of this, it is also provided in Section VIa that the Administrative Council shall decide, in the light of a study concerning particularly the financial and technical aspects, as to the scope, conditions and timing of any extension of the search. 19. Section VI.I of the Protocol authorises the Italian sub-office to carry out searches among the search material which is in its possession and in its own language. This authority extends to carrying out searches on European applications filed by Italian nationals or residents, it being understood that the procedure for grant will not thereby be delayed and that the European Patent Organisation will not incur any additional costs. This provision, which was contained in the 1972 draft of the Protocol, has now been supplemented by a Section VI. 2 authorising the sub-office also to carry out searches among the same documentation on any European patent application at the option of the applicant and at his expense. The authorisation so provided for is effective until the date when the search on all European patent applications is extended to cover this same search material, as envisaged by Section VIa. 20. The Austrian delegation proposed that the search on European applications be entrusted to "suitably qualified"